PTAB

IPR2024-00380

Jiangsu Favored Nanotechnology Co Ltd v. P2i Ltd

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Coatings
  • Brief Description: The ’087 patent relates to protective coatings for electronic devices. The invention is an electronic device with a protective, cross-linked polymeric coating applied via plasma polymerization from a monomer compound containing an aryl group and a specific cross-linking reagent.

3. Grounds for Unpatentability

Ground 1: Obviousness over Cohen and Legein - Claims 1-3, 5, 7, and 9-14 are obvious over Cohen in view of Legein.

  • Prior Art Relied Upon: Cohen (Patent 2,716,638) and Legein (WO 2014/026967).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Cohen taught preparing crosslinked polymers for insulating electrical components by copolymerizing an aryl acrylate monomer (benzyl acrylate or benzyl methacrylate) with a divinyltetramethyldisiloxane (DVTMDS) crosslinker. Petitioner asserted that Cohen’s monomers meet the ’087 patent’s monomer limitations and that the DVTMDS crosslinker meets the structural requirements of the claimed Formula B1 linker moiety. Legein taught using the claimed method—plasma polymerization—as an advantageous technique for applying protective coatings to electronic devices using the same general classes of compounds (acrylates and organosilanes) disclosed by Cohen.
    • Motivation to Combine: A POSITA would combine Cohen’s insulating copolymer composition with Legein’s deposition method to address the well-known need for robust, water-repellent coatings on consumer electronics. Legein’s teaching of plasma polymerization for applying acrylates and organosilanes to electronics would have motivated a POSITA to use this superior, solvent-free method to apply Cohen’s copolymers, which were already known to be useful for insulating electronic components and were composed of those same chemical classes.
    • Expectation of Success: A POSITA would have reasonably expected success because plasma polymerization was a routine and well-understood process for coating electronics by 2015. Legein taught that acrylates and organosilanes were suitable for this purpose, and Cohen taught that its specific monomers and DVTMDS crosslinker could be successfully copolymerized. Therefore, using a known, effective process (plasma polymerization) with known, compatible reagents to achieve a predictable result (a protective coating) would have been expected to succeed.

Ground 2: Obviousness over Francesch and Legein - Claims 1-4, 7, and 9-14 are obvious over Francesch in view of Legein.

  • Prior Art Relied Upon: Francesch (a 2005 journal article) and Legein (WO 2014/026967).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Francesch taught all elements of the claimed composition and method of formation. Francesch described creating crosslinked polymer coatings on silicon substrates using plasma polymerization, copolymerizing a fluoro-aryl methacrylate monomer (pentafluorophenyl methacrylate, or PFM) with a divinyl ether crosslinker (1,4-butanediol divinyl ether, or BDVE). Petitioner asserted that PFM meets the ’087 patent’s aryl acrylate monomer structure and that BDVE meets the requirements for a crosslinker with a Formula A linker moiety. Legein supplied the specific context of applying such plasma-polymer coatings to electronic devices to protect them from liquid damage.
    • Motivation to Combine: A POSITA seeking to protect electronics, as taught by Legein, would have been motivated to use the specific copolymer system demonstrated in Francesch. Francesch showed that the PFM/BDVE system successfully formed uniform, hydrophobic, crosslinked coatings via plasma polymerization on silicon substrates, which are common in electronics. The demonstrated success and desirable properties (hydrophobicity) of Francesch’s coating would make it an obvious choice for the application proposed by Legein.
    • Expectation of Success: A POSITA would have had a high expectation of success. Francesch had already demonstrated that PFM and BDVE successfully copolymerize via plasma deposition to form effective coatings. Legein taught that plasma polymerization is a preferred method for coating electronics and that methacrylate-based coatings are particularly suitable. Applying Francesch’s proven coating system to the specific application taught by Legein represented a combination of known elements for their intended purposes.

4. Key Claim Construction Positions

  • Petitioner argued that the claim term "aryl" should be construed to mean "an aromatic ring system." This construction was asserted to be consistent with the intrinsic record and the term's ordinary meaning to a POSITA. This construction is critical to Petitioner's arguments, as it allows the aryl acrylate monomers disclosed in the prior art, such as benzyl acrylate (Cohen) and pentafluorophenyl methacrylate (Francesch), to satisfy the "aryl" limitation of the challenged claims.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under §325(d), asserting that the primary prior art references (Cohen, Francesch, and Legein) were never substantively considered or applied in a rejection by the examiner during prosecution. Petitioner claimed the examiner erred by concluding that the claimed crosslinker structures were absent from the prior art of record.
  • Petitioner also argued against discretionary denial under Fintiv, stating that the parallel district court litigation is in a very early stage with no trial date set and dispositive motions pending. Petitioner further stipulated that if the IPR is instituted, it will not pursue in district court the specific grounds asserted in the petition or any other grounds that reasonably could have been raised.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-5, 7, and 9-14 of Patent 11,041,087 as unpatentable under 35 U.S.C. §103.