Nanoco Technologies, Ltd. v. Massachusetts Institute of Technology (MIT)

IPR2015-00528 (U.S. Pat. No. 6,322,901 C1)
Final Written Decision
July 5, 2016

Brief Summary: Petition found to show by preponderance of the evidence that certain claims of MIT’s quantum dot ‘901 patent were anticipated under § 102(a) by first reference; same (and other) claims found not anticipated under § 102(b) by second reference.

Summary: The ‘901 patent relates “to coated nanocrystals capable of light emission known as semiconductor nanocrystallites or quantum dots.” The patent was previously litigated (W.D. Wis., vol. dimissed with prejudiced) and reexamined (a second request was deemed incomplete). “[I]llustrative” claim 1 is directed to “[a] coated nanocrystal capable of light emission, comprising a core comprising a first semiconductor material, said core being a member of a monodisperse particle population; and an overcoating uniformly deposited on the core comprising a second semiconductor material” (the same or different from the first), “and wherein the monodisperse particle population is characterized in that when irradiated the population emits light in a spectral range of no greater than about 60 nm full width at half max (FWHM).” Dependent claims further characterize the coatings and the monodisperse particle population (e.g., claim 10, “exhibits no more than about a 10% rms deviation in the diameter of the core” (“rms” being the “root mean square or square root of the mean squared deviations of each measurement from the average diameter”)). IPR was instituted based on § 102(a) and § 102(b) in view of the Peng and Murray references, respectively.

The claims were considered under the “broadest reasonable construction” in which “claim terms [are ] generally [] given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art [Masters or Ph.D….in chemistry, materials science, or a related discipline] in the context of the entire disclosure” (In re Translogic, FC 2007). The Board concluded “monodisperse particle population” did not require construction as “it is defined within the context of the independent claims”. “[W]herein the first and second semiconductor material are the same” was construed during reexamination as “encompass[ing] nanocrystals comprising only a single semiconductor material” and maintained here. “[U]niformly deposited” was construed at trial “as a structural component that is deposited on the core uniformly, i.e., without variation in detail” and maintained here. The construction of “[S]hort-chain polymer terminating in a moiety having affinity for a suspension or dispersion medium” in depedent claim 21 during reexamination as “any polymer-coated nanocrystal having an affinity for a suspending medium” was also maintained. Independent claims 32 and 44 require the nanocrystal to emit light in a narrow spectral range selected from” blue, green, yellow orange “or” red light. The Board agreed with Nanoco that “the claims are directed to a nanocrystal, rather than a population of nanocrystals” (the claim includes “a list of alternatively useable species”; “the claimed single nanocrystal can only emit light in one color spectrum”).

The Board concluded Nanoco had shown by a preponderance of the evidence that claims 1, 2, 4, 6, 13, 14, 16, 24, 31, 32, 35-41, 43, 44 and 47-50 (all of those listed in the Petition) were anticipated by Peng under 102(a), based in large part on an expert declaration. MIT argued that the prior art had to describe “the entire spectral range” of independent claims 32 and 44 (“not a Markush group, but, rather, ‘a recitation of species that have to be available for selection’”) but the Board disagreed under its BRI of the claims (“a particular nanocrystal is a particular size and, thus, emits only one of these alternative colors” and “we are not persuaded that the claims are product-by-process claims”). Thus, the Petition was also found to show that those claims are their dependents were anticipated by Peng. The Board also concluded the Petition had not shown by a preponderance of the evidence that claims 1, 10 and 32 (or their dependent claims) were anticipated by Murray (not established “that the claimed core and overcoating would not be structurally different from Murray’s uncoated ‘homogenous’ core” and noting the only expert testimony regarding “the claimed core and overcoating” was provided by “an employee of Petitioner”).

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