PTAB

IPR2021-00182

Samsung Electronics Co Ltd v. Nanoco Technologies Ltd

Key Events

Petition

petition

Case #: IPR2020-01642 (Note: Petition filed with a blank number, IPR2020-, later assigned this number)
Patent #: 9,680,068
Filed: November 9, 2020
Petitioner(s): Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.
Patent Owner(s): Nanoco Technologies Ltd.
Challenged Claims: 1

Title: Quantum Dot Films Utilizing Multi-Phase Resins
Brief Description: The ’068 patent describes a method for manufacturing a quantum dot (QD) containing film. The method involves forming an emulsion of two polymer phases, with QDs in the first phase, depositing this emulsion between gas barrier sheets, and curing the polymers to form a protective film.

Prior Art Relied Upon: Dubrow (Application # 2012/0113672).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Dubrow expressly teaches every element of the claimed method. Dubrow discloses a method for making a multi-phase polymeric QD film where immiscible polymers form an emulsion, with QDs contained in one phase (e.g., APS-coated QDs in an epoxy matrix). It further teaches depositing this emulsion between two protective barrier layers to shield the QDs from oxygen and moisture. Finally, Dubrow describes curing the deposited polymer mixture, using methods such as thermal or UV curing, to form the final film. Petitioner asserted that Dubrow discloses performing these steps in the same sequence as claimed.

Prior Art Relied Upon: Dubrow (Application # 2012/0113672).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner presented this ground as an alternative, arguing that even if Dubrow were found not to disclose the exact claimed sequence in a single embodiment, the claim would have been obvious. Dubrow discloses all the necessary components and steps: a multi-phase QD-polymer emulsion, deposition between barrier sheets, and curing.
- Motivation to Combine (if applicable): Petitioner contended that if Dubrow's disclosure of depositing the emulsion before curing was considered a separate embodiment from its other teachings, a person of ordinary skill in the art (POSITA) would have been motivated to arrange the steps as claimed. The motivation would be to follow a logical and well-known manufacturing process for laminated films.
- Expectation of Success: A POSITA would have had a high expectation of success because Dubrow expressly describes these steps as "suitable methods" for forming the QD film, confirming their compatibility and effectiveness.

Prior Art Relied Upon: Nelson (Patent 10,316,245) and Dubrow (Application # 2012/0113672).
Core Argument for this Ground:
- Prior Art Mapping: Nelson was asserted to teach a method of making a QD film comprising multiple polymers (methacrylate and epoxy) and QDs, which is then deposited between two barrier layers and cured. However, Nelson creates its microstructure through a two-step curing process rather than by forming an initial emulsion. Dubrow was asserted to supply the missing element: forming a multi-phase emulsion to better protect the QDs within distinct hydrophobic domains.
- Motivation to Combine: A POSITA would combine Nelson and Dubrow to improve the protective properties of Nelson’s film. Nelson’s goal is to protect QDs, and Dubrow teaches that forming an emulsion with a hydrophobic polymer phase encasing the QDs is a preferred way to create domains that are impermeable to moisture and oxygen. A POSITA would have been motivated to incorporate Dubrow's superior emulsion technique into Nelson's general framework to achieve enhanced QD stability.
- Expectation of Success: A POSITA would have a reasonable expectation of success because the materials are compatible. Dubrow teaches that polymers like the methacrylate and epoxy used in Nelson are suitable for its emulsion-based method. Combining the teachings would be a straightforward application of known polymer chemistry principles to achieve a predictable improvement in barrier properties.

Petitioner argued that discretionary denial under §314(a) based on the Fintiv factors was inappropriate. The scheduled district court trial date was uncertain due to the pandemic and court backlog, diminishing the weight of that factor. Critically, Petitioner stipulated that if the inter partes review (IPR) was instituted, it would not pursue the same invalidity grounds in the parallel district court litigation, eliminating concerns of overlap and duplicative efforts. Petitioner also contended that the petition was filed promptly and presented a strong case on the merits, which weighs against denial.

Petitioner requested institution of IPR and cancellation of claim 1 of the ’068 patent as unpatentable.