PTAB

IPR2021-00186

Samsung Electronics Co Ltd v. Nanoco Technologies Ltd

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Preparation of Nanoparticle Materials
  • Brief Description: The ’365 patent describes a nanoparticle comprising a molecular cluster compound (MCC) and a core semiconductor material disposed on the MCC. A key feature is that the core semiconductor material comprises one or more elements not found within the MCC itself.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 7-12, 17, and 22-23 by Banin

  • Prior Art Relied Upon: Banin (WO 03/097904).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Banin explicitly disclosed every limitation of the challenged claims. Banin taught a method for synthesizing rod-shaped InAs nanocrystals (nanoparticles) using gold (Au) clusters as "large seeds" for rapid growth. Petitioner asserted that Banin's Au clusters are the claimed "molecular cluster compound" and the InAs nanorods are the "core semiconductor material" disposed thereon. The elements of the core (Indium and Arsenic) are not comprised within the Au cluster, thus meeting all limitations of independent claim 1. Banin further taught applying shells (e.g., ZnSe) to the InAs core, anticipating dependent claims related to shell materials.
    • Key Aspects: This ground asserted that a single reference, which was not considered during prosecution, taught the complete claimed invention.

Ground 2: Obviousness of Claims 2-6 and 18-21 over Banin in view of Herron

  • Prior Art Relied Upon: Banin (WO 03/097904), Herron (a 1993 Science journal article describing a CdS molecular cluster).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon Banin by substituting its Au-based MCC with the Cd-based MCC disclosed in Herron. Herron described a large, well-characterized CdS molecular cluster, Cd₃₂S₁₄(SC₆H₅)₃₆·DMF₄, suitable for nanoparticle synthesis. The resulting nanoparticle would have a CdS-based MCC (from Herron) and an InAs core (from Banin), satisfying the limitations of the dependent claims requiring specific elements (e.g., group 12 and 16 elements like Cd and S) in the MCC.
    • Motivation to Combine: Petitioner argued a POSITA would combine Banin and Herron for several reasons. First, Banin explicitly suggested that its "metal catalyst" (the MCC) could be made from transition metals other than gold, specifically including Cadmium (Cd). Second, Cd-based MCCs like Herron's were well-known, widely used, and less expensive than Au-based MCCs. A POSITA would have found it routine to substitute one known seed material for another suggested and advantageous alternative.
    • Expectation of Success: A POSITA would have a high expectation of success because Banin and Herron operate in the same technical field of nanoparticle formation. The ’365 patent itself acknowledged Herron’s MCC as a potential template for particle growth, confirming its suitability. The proposed substitution was a predictable combination of known elements.

Ground 3: Obviousness of Claims 1-9 and 17-23 over Zaban in view of Farneth and Yu

  • Prior Art Relied Upon: Zaban (a 1998 journal article), Farneth (a 1992 journal article), and Yu (a 2001 journal article).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground argued for modifying the nanoparticle synthesis method of Zaban. Zaban taught synthesizing Indium Phosphide (InP) quantum dots from In-based and P-based precursors in the presence of a Zn-based precursor. The combination proposed replacing Zaban's simple Zn-based precursor with the stable Zn- or Cd-based MCC taught by Farneth, and performing the reaction at the lower temperatures taught by Yu. The resulting nanoparticle would comprise an InP core (from Zaban) disposed on a stable MCC (from Farneth), produced under conditions (from Yu) that ensure the MCC acts as a seed.
    • Motivation to Combine: A POSITA would combine these references to improve the efficiency and control of Zaban's synthesis. Using an MCC as a seed, as taught by Farneth, was known to offer significant benefits like higher yields and more uniform particle size. However, Farneth's MCC might not be stable at Zaban's high reaction temperature (270 °C). Yu solved this problem by teaching seeded growth using MCCs at much lower temperatures (room temp to 150 °C), which would maintain the structural integrity of Farneth's MCC. Therefore, a POSITA would have been motivated to combine the three references to achieve the benefits of seeded growth in a stable, energy-efficient process.
    • Expectation of Success: A POSITA would reasonably expect success because the prior art demonstrated successful use of MCCs (like Farneth's) to seed nanoparticle growth at the lower temperatures taught by Yu. The combination involved applying known principles of seeded growth to a known synthesis reaction to achieve predictable improvements.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including claims rendered obvious by Banin alone (Ground 2), Banin in view of Treadway (Ground 4), Lucey in view of Ahrenkiel (Ground 6), and Lucey in view of Ahrenkiel and Treadway (Ground 7). These grounds relied on similar theories of substituting or combining known nanoparticle synthesis techniques and materials.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §314(a) based on Fintiv factors was inappropriate. The core arguments were that the petition was filed promptly after infringement contentions were served in the parallel district court case, and Petitioner stipulated that it would not pursue the same grounds or primary references in that case if the IPR was instituted. Petitioner also asserted that the merits of the petition were exceptionally strong and that denying institution would run counter to the interests of efficiency and the integrity of the patent system.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-23 of the ’365 patent as unpatentable.