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Expanding universe of “prior art”: Patent applications will be more vulnerable to attack if filed after March 16, 2013

21 Jan

HR1249U.S. patent law is scheduled to soon experience major changes under the America Invents Act (AIA) that will make it harder to get a patent granted and that will make it easier to challenge an issued patent.  Therefore, if contemplating filing a patent application in the near future, it’s wise for applicants to do so before March 16, 2013, the day these changes take effect.

One major change is that the “prior art” universe is expanding on March 16, 2013.  “Prior art” is the term used for references or activities that can be cited against the patentability of a patent application or the validity of an issued patent.  Under current law, for a sale, offer for sale, or public use of a product to qualify as “prior art,” this activity had to (i) occur in the U.S. and (ii) be earlier than one year before the patent application’s filing date.  Under the new law, being on sale or in public use anywhere in the world can be cited.

In addition, under current law, for a foreign patent application to qualify as “prior art” against your U.S. patent application, it has to satisfy at least one of the following conditions:

  1. published before your conception date,
  2. published more than one year before your filing date, or
  3. filed before your conception date as an international patent application under the Patent Cooperation Treaty (“a PCT application”), that was published in English, designated the U.S., and resulted in a granted patent.

Under the new law, conditions (1) and (3) of the current law disappear since the conception date no longer matters (as discussed below).  Condition (2) of the current law excludes all foreign patent applications that published less than one year before your filing date, but under the new law, condition (2) is modified to only exclude foreign patent applications by the inventors (or obtained from the inventors) that are published less than one year before your filing date. 

A second major change in U.S. patent law, receiving the bulk of the buzz regarding the new law, is that the U.S. is changing from a “first to invent” standard to a “first to file” standard.  It’s always been beneficial to file patent applications as soon as possible, but under the old “first to invent” standard, even if you filed your patent application after someone else did for the same invention, you could be awarded the patent instead of them by proving that you were the “first to invent,” i.e., you invented the claimed invention before they did.  However, under the new “first to file” standard, the first party filing their patent application is awarded the patent, regardless of who was the “first to invent.”  

(Rigorously speaking, the new law is actually a ”first inventor to file” standard, since it prevents someone from obtaining the invention from the inventors, and then racing to the patent office to file an application first for something this someone didn’t actually invent.)

It’s rare that two entities separately conceive and file patent applications for the same invention.  But this change to a “first to file” standard makes an important contribution that further expands the “prior art” universe.  Under the current “first to invent” standard, the date that you conceived of the claimed invention could be used to exclude a certain category of references that were available to the public before your filing date from being considered “prior art” against your patent application.  But under the “first to file” standard, applicants can no longer rely on their earlier date of conceiving the claimed invention to overcome any cited references.  In other words, conception date will no longer matter; only the application’s filing date will control.

Besides expanding the “prior art” universe, the new law also introduces a new “post-grant review” (PGR) mechanism for challenging the validity of U.S. patents within nine months of issuance before the Patent Trial and Appeal Board.  This mechanism became available to challenge so-called “business method” patents in September 2012, but on March 16, 2013, it will be available to challenge all U.S. patents with filing dates after this date.  In conjunction with the other mechanisms for challenging issued patents (e.g., ex parte reexamination and inter partes review), each with its own requirements and pros and cons, PGR opens up a new way for competitors to invalidate your patent.

Finally, the new law includes language that has not yet been interpreted by the federal courts, so the full effects of the new law are uncertain at present. 

For one example, with regard to the activities anywhere in the world being “prior art,” as discussed above, the new law states that the application can be rejected if the claimed invention is ”in public use, on sale, or otherwise available to the public” before the application’s filing date.  So does “otherwise available to the public” mean that a private sale of the invention would not qualify as “prior art” under the new law?  Under existing law, any sale or offer for sale in the U.S.would qualify as “prior art,” public or private.  Until the courts weigh in, it’s probably prudent to make the conservative assumption that any sales or offers for sale, public or private, would qualify as “prior art” and to strive to not enter into such activity unless a patent application is already on file.

For another example, the new law excludes “disclosures” made by the inventors (or obtained from the inventors) within one year before the application’s filing date from being considered as “prior art” against the application.  But are being ”on sale” or “in public use” considered to be ”disclosures” under the new law?  Under existing law, sales, offers for sale, and public uses are excluded from being “prior art” if within one year before the application’s filing date.  Here, until the courts weigh in, the conservative assumption to make is that this one-year grace period does not apply to these activities.  In other words, don’t do anything that might be considered to be a disclosure of the invention until you first have a patent application filed.

In summary, under the new regime of the AIA, patent applications filed after March 16, 2013 will have to overcome a larger universe of “prior art” references to be granted as a U.S. patent, there will be more options for competitors to challenge the validity of such patents, and there will be uncertainty in how the law applies to various situations.  Therefore, potential applicants should consider filing their patent applications before March 16, 2013, to avoid this new regime.

 
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Posted by on January 21, 2013 in aia, america invents act, patent law

 

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Your patent is invalid if you’re not the first inventor: The Fox Group, Inc. v. Cree, Inc.

01 Dec

The Federal Circuit recently handed down a decision affirming a lower district court ruling that found the claims of U.S. Pat. No. 6,562,130 asserted against Cree, Inc. by The Fox Group, Inc. to be invalid, since Cree had produced the claimed single-crystal silicon carbide (SiC) material before the priority date of the ’130 patent.

This result was based on the “first to invent” requirement under current U.S. patent law, which is scheduled to change to a “first inventor to file” requirement on March 16, 2013 as part of the Leahy-Smith America Invents Act (AIA).  But as described at the end of this post, under the facts of this case, the result would be the same even if the upcoming “first inventor to file” requirement were used instead.

SiC is a man-made material that has been around for more than a century in a multicrystalline and high defect density form, primarily used as an abrasive.  But in single-crystal form with low intrinsic defect densities (e.g., dislocations, micropipes, and inclusions of a secondary phase within the crystal), SiC is a semiconductor that can be used in LED light sources and electronics designed to withstand high power levels and high temperatures.  In addition, single-crystal SiC can be used as a substrate material for epitaxial growth of bulk Group III nitrides (e.g., gallium nitride) for high speed electronics.

  

Cree markets a wide variety of LED-based lighting components, power MOSFETs, and electronic devices for RF communications, all  based on single-crystal SiC.  For fiscal year 2012, Cree reported revenues of $1.16 billion.  The Fox Group is apparently affiliated with Nitride Crystals, Inc., a supplier of SiC wafers which lists the ’130 patent on its website as one of its patents.

Under current U.S. patent law’s “first to invent” requirement, a patent is invalid if the listed inventors were not the first inventors of the claimed invention (i.e., the claimed invention was first invented by someone else), as long as the first inventors had not “abandoned, suppressed, or concealed” the invention (35 U.S.C. 102(g)).  To get a patent deemed invalid under this provision, the accused infringer can prove that the invention was made by someone else prior to the listed inventors doing so.  The prior inventor does not have to be the accused infringer, but in many cases, this is the case since the accused infringer typically has much more information and evidence regarding its activities than it does of the activities of some third party.

Cree showed that in 1995 it had produced a SiC wafer that included a region with an exceptionally low intrinsic defect density, as evidenced by x-ray topographs, and that this wafer met the features of the material claimed in the ’130 patent.  Cree also showed that it had publicized this result at a technical conference in 1995 and in a journal article in 1996.  Since the priority date of the ’130 patent was in 1997, the district court held that the asserted claims of the ’130 patent were invalid, and granted summary judgement to Cree.  The Federal Circuit affirmed the lower court ruling on the basis that Cree had proved that (i) it had once made the claimed material in 1995 so its researchers were prior inventors to those of the ’130 patent and (ii) it had promptly and publicly disclosed its findings regarding the wafer’s low defect density to the public, so it had not abandoned, suppressed, or concealed the invention.

Since the claims of the ’130 patent were directed to the SiC material itself, and not the process of making the material, it was enough for Cree to have shown that it once made the claimed material before the priority date of the ’130 patent, and that Cree had promptly publicized this result.  Had the claims of the ’130 patent been directed instead to a process of making such materials, Cree’s proof might have been insufficient, since it is not clear whether Cree’s public disclosure was sufficiently detailed to enable someone skilled in the technology to perform such a process.

It’s interesting to consider how the same facts would play out under the AIA’s upcoming “first inventor to file” requirement scheduled to go into effect on March 16, 2013.  Under the AIA, 35 U.S.C. 102 omits subsection (g), and the relevant portion states that “a person shall be entitled to a patent unless …  the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.”  Since Cree publicized the properties of its low-defect-density SiC wafer in 1995 and 1996, before the effective filing date of the ’130 patent in 1997, the ’130 patent would be held invalid under this statute as well.

(The AIA’s statute includes an exception if the public disclosure was made by the inventors listed on the patent within one year of the patent’s effective filing date, but since the disclosure at issue was by Cree and not the listed inventors of the ’130 patent, this exception does not apply under these facts.)

 
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Posted by on December 1, 2012 in aia, america invents act, inventorship, materials, patent law

 

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MGA Entertainment liable for willfully infringing Innovention Toys’ patent for a laser/mirror board game

26 Nov

A jury in the Eastern District of Lousiana found last week that MGA Entertainment‘s “Laser Battle” board game which uses a laser beam and a series of mirrors willfully infringed U.S. Pat. No. 7,264,242, owned by Innovention Toys LLC.  The jury set the amount of damages to $1.6 million.  According to an article from Law360, this litigation has been going for more than five years, with many twists and turns along the way.  Innovention’s attorney fees during this five-year saga will likely take a large bite out of the damages, but Innovention has stated that they will be pursuing additional enhanced damages for MGA’s willful infringement, potentially tripling the total damages they collect from MGA.

Innovention Toys markets its own game called “Khet,” in which players “move Egyptian themed mirrored pieces after which they fire their REAL (eye-safe) laser with the goal of blasting their opponent’s pharaoh to win the game.”  I think that any of us that have aligned optical elements of a laser system on an optical table can immediately envision how the game works.

The company’s FAQ page seeks to manage the expectations of its customers by explaining that while the game’s Class II lasers, lower in power than most laser pointers, give “the neat effect of firing a laser to bombard your opponent’s pieces, you will not get the wow effect of seeing it melt or blow holes through the playing field.” 

The game is played by optics students and researchers in breakrooms around the world, and a Khet tournament was held at the 2010 Photonics West conference.  It also has been used in classrooms to teach some basic principles of light and optics. 

 
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Posted by on November 26, 2012 in games and toys, infringement, laser, patent law

 

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Hive Lighting wins $25,000 in So. Cal. business pitch competition

20 Nov

Hive Lighting, Inc. of Los Angeles, CA recently won first prize and a $25,000 cash investment in the Seventh Annual “Survivor” business pitch competition for Southern California entrepreneurs, held by Tech Coast Venture Network last week at Chapman University in Orange, CA.

Hive Lighting produces a line of lamps for the film, television, digital, and stage production industries that, according to its website, utilize single-point plasma sources that last “10,000+ hours, are flicker-free, [provide] universal orientation, and produce full, even spectrum 5600 CCT daylight balanced light with a CRI of 94.”  According to Hive Lighting’s CEO, Robert Rutherford, Hive’s products utilize 50%-90% less energy than conventional filament-based lamps.

Hive Lighting is a portfolio company of the LA CleanTech Incubator, and the company’s win at TCVN’s “Survivor” event comes soon after the company took top honors and $20,000 at the California Clean Tech Open in October.  The company also won “Best New Lighting Technology” awards from CineGear Expo and TVBEurope’s “Best of IBC Awards” earlier in 2012.

A search of the USPTO database finds one published patent application (U.S. Pat. Appl. Publ. No. 2012/0230030) assigned to Hive Lighting for hexagonal-shaped modular light housings that can be interconnected together to “form a tesselation array” (i.e., a two-dimensional array of lamps).  Looking at the figures of this U.S. patent application, the origin of the company’s name is clear.

A check of the patent application’s status shows that the company had requested that the USPTO not publish the patent application, but the non-publication request was not recognized by the USPTO because it was not signed properly by the patent attorney filing the application.  An electronic signature (or “S-signature”) was used, which requires a first forward slash, then an alphanumeric identifying sequence, followed by a second forward slash (e.g., /Bruce Itchkawitz/).  But apparently, since the filed S-signature did not include the trailing forward slash, it was not recognized by the USPTO.  (Just another reason that I use a handwritten signature wherever possible, not an S-signature.)

 
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Posted by on November 20, 2012 in green technology, illumination, plasma

 

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Aurora Lighting sued by Philips for patent infringement

06 Nov

On November 2, 2012, Koninklijke Philips Electronics N.V. and Philips Solid-State Lighting Solutions, Inc. filed suit in the U.S. District Court for the District of Massachusetts, accusing Aurora Lighting Inc. of patent infringement of seven U.S. patents for light-emitting diode lighting technology. 

         

The accused Aurora devices include various LED retrofit bulbs designed to be installed in conventional light sockets, as well as downlight flat panel products and wallwasher products.  The asserted patents disclose various power supply configurations (see here, here, and here), multicolor bulbs (see here and here), and luminaire configurations (see here and here). 

Some of the asserted patents were among the dozens of U.S. patents obtained by Philips through its acquisition of Color Kinetics, Inc. in 2007 for a purchase price of about $791 million.  Color Kinetics was then renamed to become Philips Solid-State Lighting Solutions, Inc. 

 
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Posted by on November 6, 2012 in illumination, infringement, LED, light emitting diode, patent law

 

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Optical tip for Near-Field Scanning Optical Microscope; Optonet Inc.; U.S. Pat. No. 8,201,268

27 Jul

U.S. Patent No. 8,201,268, issued on June 12, 2012 to OptoNet Inc. of Evanston, IL, discloses a sub-wavelength optical tip for a near-field scanning optical microscope (NSOM).

 

Due to the diffraction limit, resolution in conventional optical microscopy is limited so that features have to be larger than about one-half wavelength to be resolved.  In contrast, near-field scanning optical microscopy is able to image smaller features since its resolution is not diffraction-limited.  An NSOM scans a small optical tip (e.g., at the end of an optical waveguide) that serves as a light source in close proximity to the surface being imaged, and utilizes the evanescent field in the near-field region to detect the surface features.  The ’268 patent discloses an optical tip that has values of the refractive indices of the core and cladding of the waveguide which result in high energy throughput for near-field scanning operations and faster scanning speeds, with low localized heating at the probe.

According to its website, OptoNet “develops advanced, innovative photonic chips and modules based on proprietary approaches to monolithic integration of InP photonic devices” and “Si packaging platform design for avionic applications,” and its customers include the Navy and Air Force.  OptoNet has ties with Northwestern University’s Nano-Photonics and Quantum Electronics group.  For example, the inventors of the ’268 patent include Northwestern’s Professor S.T. Ho and Yingyan Huang, a former Ph.D. candidate, now President of OptoNet.

The company received a Small Business Innovative Research (SBIR) “Phase I” grant in 2008 of $100,000 from the National Science Foundation for developing an NSOM probe “utilizing an innovative high-refractive-index nanoscale waveguide (nanoWG) as the probing tip,” which sounds like the invention disclosed by the ’268 patent.  More recently, the company received a 2011 SBIR Phase I grant of $150,000 from the Department of Energy for developing a “proof-of-concept prototype,” with future work planned to develop ”a full series of ultra-high-power NSOM probe modules” that are plug-compatible with current NSOM probes.

According to the USPTO database, OptoNet owns four U.S. patents, three of which have been received in 2012.

 
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Posted by on July 27, 2012 in detector, fiber optics, imaging, nanotechnology, spectroscopy

 

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Fiber array connector; Lightwire LLC; U.S. Pat. No. 8,200,056

16 Jul

U.S. Patent No. 8,200,056, issued on June 12, 2012 to Lightwire LLC of San Jose, CA, discloses a multi-fiber connector for photonic subassemblies.

    

According to the ’056 patent, optical fiber network interfaces can be expensive to manufacture, largely due to the difficulty in mounting and aligning the optical fibers with the corresponding devices, and the manufacturing costs have been a factor in slowing the penetration of fiber optic technology into local area networks.  The connector disclosed in the ’056 patent is designed to interconnect a fiber array with a planar photonic subassembly using “low-cost alignment techniques, while relaxing manufacturing tolerances … and permitting the use of inexpensive materials.”

Lightwave, headquartered in Allentown, PA, was recently acquired by Cisco Systems in March 2012 for $271 million in cash and retention-based incentives.  According to the Cisco press release, Lightwire’s advanced optical interconnect technology for high-speed networking ”will allow Cisco to deliver cost-effective, high-speed networks with the next generation of optical connectivity.”  In Cisco’s blog, the company explains that Lightwire’s CMOS (complementary metal-oxide-semiconductor) technology results in “lower power consumption, higher densities, and lower costs,” and the acquisition will allow Cisco to use the advanced silicon optical technology across its entire product portfolio.

According to the USPTO database, Lightwave received two U.S. patents in 2012, including the ’056 patent, and had 75 U.S. patents overall.

 
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Posted by on July 16, 2012 in connector, fiber optics, optical network

 

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Photonic milling system; Electro Scientific Industries, Inc.; U.S. Pat. No. 8,178,818

15 Jun

U.S. Patent No. 8,178,818, issued on May 15, 2012 to Electro Scientific Industries, Inc. (ESI) of Portland OR, discloses a photonic milling system using dynamically modulated beam arrays.

     

High-power lasers are used in semiconductor electronics fabrication for micro-machining by ablating selected materials to form various structures.   The ’818 patent discloses a “photonic milling” system that uses a beamlet array to mill away selected conductive material (e.g., to remove an electrical connection between two conductive circuit portions).  According to the ’818 patent, a pulsed laser beam is parsed into a beamlet array, and the beamlets are each modulated and focused onto the workpiece.  The workpiece is moved around underneath the optical system by an x-y positioner in coordination with the delivery of the modulated beamlet array to ablate specific targets on the surface of the workpiece.

According to its website, ESI markets “innovative, laser-based manufacturing solutions for the microtechnology industry,” and its product line includes laser systems (e.g., for fuse processing, trimming, and micromachining) that can utilize the laser milling system of the ’818 patent.  According to the USPTO database, ESI received 24 U.S. patents in 2010, 34 U.S. patents in 2011, and 14 U.S. patents (so far) in 2012.

 
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Posted by on June 15, 2012 in high power, laser, micromachining

 

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“Photonic-powered” player card; IGT; U.S. Pat. No. 8,162,737

08 Jun

U.S. Patent No. 8,162,737, issued on April 24, 2012 to IGT of Reno, NV, discloses a “photonic-powered” player card for keeping track of a gambler’s activities.

According to the ’737 patent, the ability of a casino operator to maximize their operating profits and keep their customers happy is linked in part to their ability to provide rewards or “comps” to their customers commiserate with their value to the casino (i.e., how much money they gamble).  Currently, casinos use a “player card” system which uses a card with a magnetic strip (similar to a credit card) which is swiped to identify the player and to track the player’s activity.  The ’737 patent explains that magnetic-striped cards can only hold a limited amount of information, must be swiped through a contact-based reader, and they don’t provide the player with easily-discernable information. 

The “photonic-powered” card disclosed by the ’737 patent includes a photovoltaic cell which can receive light to provide power to the card and a bi-directional optical interface (with photodetectors and/or LEDs) for contactless communication with the gaming machine (e.g., slot machine, blackjack table).  Other features disclosed by the ’737 patent for the card include non-volatile memory, a liquid-crystal display (LCD), and a touch screen.  Since such an optical communication card would use “line of sight” communication, it is described by the ’737 patent as being more secure than RFID technology which, while contactless, is omnidirectional and more prone to having its signals intercepted.  As interesting as this technology might seem, IGT apparently wasn’t sufficiently interested in it to warrant filing further continuation applications to pursue additional claim scope covering the technology.

According to its website, IGT is a publicly-traded company that “has been the leading company specializing in design, development, manufacturing, distribution, and sales of computerized gaming equipment, software, and network systems worldwide” since 1981.  Patents are certainly a crucial factor in IGT’s protection of their innovations.  The company has received 117 U.S. patents so far in 2012, and received 271 patents in 2011.  The company also is willing to assert its patents against perceived infringers.

I was interested to see that IGT’s website includes a page by which anyone can submit ideas and suggestions to the company.  The page includes a link to an idea submission agreement that, among other provisions, cautions potential submitters that IGT can use the information any way it wishes, and that the only protections the submitter has are those available under the patent and copyright laws of the United States.  In other words, the odds are stacked in favor of the house.

 
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Posted by on June 8, 2012 in authentication, detector, display, LED, photovoltaics

 

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Process for making silicon nanowires; Bandgap Engineering Inc.; U.S. Pat. No. 8,143,143

30 May

U.S. Patent No. 8,143,143, issued on March 27, 2012 to Bandgap Engineering Inc. of Waltham, MA, discloses a process for fabricating silicon nanowires.

According to the ’143 patent, silicon nanowires have been previously grown “from the bottom up” using various deposition techniques performed under vacuum conditions, and formed by removing material from bulk silicon “from the top down” using various plasma etching techniques performed under vacuum conditions.  However, the costs and limited scalability of these techniques has hindered their use.  Existing solution-based processes to etch silicon wafers in a direction normal to the surface have had limited success in achieving diameters that are less than 100 nanometer, which the ’143 patent describes as being of value “to a variety of electronic, optoelectronic, electrochemical and electromechanical applications” since “it is within the sub-100 nm range that silicon begins to demonstrate novel properties distinguishable from the properties of bulk silicon.” 

The ’143 patent discloses a solution-based etching process that deposits sub-100 nm nanoparticles and a silver film onto the silicon wafer, which is then exposed to an etchant aqueous solution of HF and an oxidizing agent.  The silicon wafer is etched in the regions between the nanoparticles, leaving an array of sub-100 nm silicon nanowires standing up on the silicon wafer.  For example, the electron microscope micrographs above show a field of silicon nanowires that have diameters ranging from 12-70 nanometers.  The ’146 patent mentions various uses of this material, including as an interfacial layer between bulk silicon and another material, and novel LED and transistor applications.  Of particular interest to Bandgap Engineering are photovoltaic applications, which utilize the quantum confinement in the silicon nanowires to form intermediate band photovoltaic (IBPV) materials for solar cells, and as anodes in lithium ion batteries.

 According to its website, “Bandgap’s nanowire-enhanced solar cell designs combine low-cost processing with crystalline silicon to yield high-efficiency products” which are made possible by their “highly tunable silicon nanowires.”  They tout that their high-efficiency photovoltaics can reduce reflection of incident light and can “dramatically increase the optical absorption of silicon.”  The company is also developing their silicon nanowires for “high-capacity Li-ion battery anodes.”

According to the USPTO database, the ’146 patent is Bandgap Engineering’s second U.S. patent, the first being issued in July 2011 (U.S. Pat. No. 7,973,995) for an optoelectronic device having a nanowire array and a host material intermingled with the nanowire array and containing light-scattering or absorption/luminescence centers.

 
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Posted by on May 30, 2012 in materials, nanotechnology, photovoltaics

 

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