UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`CARL ZEISS SMT GMBH
`
`Petitioner
`
`v.
`
`NIKON CORPORATION
`
`Patent Owner
`
`__________
`
`Case IPR2013-00362
`
`Patent 7,348,575
`
`__________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`CARL ZEISS SMT GMBH
`
`Petitioner
`
`v.
`
`NIKON CORPORATION
`
`Patent Owner
`
`__________
`
`Case IPR2013-00362
`
`Patent 7,348,575
`
`__________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Attorney Docket: 24984-0056IP1
`Proceeding: IPR2013-00362
`
`
`TABLE OF CONTENTS
`
`Nikon’s unsupportably narrow constructions for “boundary lens” and the
`claim preamble ................................................................................................. 1
`
`Nikon does not and cannot establish that a POSITA would not have had a
`reasonable expectation of success to modify Terasawa to implement
`immersion ........................................................................................................ 5
`
`A POSITA in 2003 would have been able to use optical design software to
`modify the lens prescription in Terasawa to implement immersion to
`increase NA and/or DOF ............................................................................... 11
`
`
`
`1.
`
`2.
`
`3.
`
`4.
`
`There was motivation to modify Terasawa to increase DOF ........................ 14
`
`
`
`
`
`i
`
`
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`Attorney Docket: 24984-0056IP1
`Proceeding: IPR2013-00362
`
`
`
`TABLE OF AUTHORITIES
`
`CFMT, Inc. v.Yieldup Intern. Corp., 349 F.3d 1333, 1383 (Fed. Cir. 2003) ............ 8
`
`GE Lighting Solutions, LLC v. Agilent, Inc., CAFC No. 2013-1267, slip. op. (Fed.
`Cir. May 1, 2014) ............................................................................................. 3
`
`In re Antor Media Corp., 689 F.3d 1282, 1288-89 (Fed. Cir. 2012) ......................... 5
`
`In re Mouttet, 686 F.3d 1322, 1344 (Fed. Cir. 2012) .............................................. 15
`
`Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1328 n.4 (Fed. Cir. 2008) ..... 5
`
`SRI Intern., Inc. v. Internet Sec. Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir.
`2008) ................................................................................................................ 6
`
`Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1362, 1365-7
`(Fed. Cir. 2012) ................................................................................................ 2
`
`Verizon Services Corp., 602 F.3d 1325, 1337 (Fed. Cir. 2010) ................................ 5
`
`
`
`
`
`ii
`
`
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`Attorney Docket: 24984-0056IP1
`Proceeding: IPR2013-00362
`
`EXHIBITS
`
`U.S. Patent No. 7,348,575 (“the Omura Patent”)
`
`U.S. Patent No. 7,309,870 (“the Omura ’870 Patent”)
`Judgment, Paper No. 49, Interference No. 105, 678
`(“the ’678 Judgment”)
`Judgment, Paper No. 157, Interference No. 105, 749
`(“the ’749 Judgment”)
`Judgment, Paper No. 41, Interference No. 105, 753
`(“the ’753 Judgment”)
`Judgment, Paper No. 291, Interference No. 105, 834
`(“the ’834 Judgment”)
`PCT Patent Publication WO 02/035273 (“Takahashi
`PCT”)
`US Patent Application Publication No. US
`2002/0024741 A1 (“Terasawa”)
`US Patent No. 5,825,043 (“Suwa”)
`M. Switkes and M. Rothschild, “Resolution
`Enhancement of 157 nm Lithography by Liquid
`Immersion,” Proc. SPIE Vol. 4691, pp. 460-465
`(2002) (“Switkes”)
`Willi Ulrich et al., “The Development of Dioptric
`Projection Lenses for DUV Lithography,” Proc.
`SPIE Vol. 4832, pp. 158-169 (2002) (“Ulrich”)
`PCT Patent Publication WO 99/49504 (“Fukami JP”)
`Satori Asai et al., “Resolution Limit for Optical
`Lithography Using Polarized Light Illumination,”
`Jpn. J. Appl. Phys. Vol. 32, pp. 5863-5866 (1993)
`(“Asai”)
`European Patent Application Publication No. EP 1
`336 887 A1 (“Takahashi”)
`Certified English translation of PCT Patent
`Publication WO 99/49504 (“Fukami”)
`Expert Declaration of Richard C. Juergens
`
`ZEISS 1001
`
`ZEISS 1002
`
`ZEISS 1003
`
`ZEISS 1004
`
`ZEISS 1005
`
`ZEISS 1006
`
`ZEISS 1007
`
`ZEISS 1008
`
`ZEISS 1009
`
`ZEISS 1010
`
`ZEISS 1011
`
`ZEISS 1012
`
`ZEISS 1013
`
`ZEISS 1014
`
`ZEISS 1015
`
`ZEISS 1016
`
`
`
`iii
`
`
`
`Attorney Docket: 24984-0056IP1
`Proceeding: IPR2013-00362
`Wikipedia, “Optical Power,”
`https://en.wikipedia.org/wiki/Optical_power
`(downloaded May 20, 2013)
`Willi Ulrich et al., “Trends in Optical Design of
`Projection Lenses for UV- and EUV-Lithography,”
`Proc. SPIE Vol. 4146, pp. 13-24 (2000) (“Ulrich
`2000”)
`Eugene Hecht, Optics (4th ed.), Addison Wesley
`(2002), pp. 171-173.
`Wikipedia, “Optical Axis,”
`https://en.wikipedia.org/wiki/Optical_axis
`(downloaded May 20, 2013)
`File History Excerpts from U.S. Serial No.
`11/266,288 (“the Omura Application”)
`File History Excerpts from U.S. Serial No.
`11/513,160 (“the Omura Continuation Application”)
`Decision, Paper No. 40, Interference No. 105,753
`(the “753 Decision”)
`Wikipedia, “Refractive Index,”
`http://en.wikipedia.org/wiki/Refractive_index
`(downloaded May 20, 2013)
`U.S. Patent No. 4,346,164 (“Tabarelli”)
`Omura Reply 1, Paper No. 200, Interference No.
`105,834
`European Patent Application Publication No. EP 1
`069 448 B1 (“Suenaga”)
`Curriculum Vitae of Richard C. Juergens
`
`CODE V sequence data
`US Patent Publication 2013/0329283
`(cited as exhibit 1030 during May 7, 2014 cross-
`examination of Dr. Sasian)
`US Patent No. 5,650,877
`(cited as exhibit 1031 during May 7, 2014 cross-
`examination of Dr. Sasian)
`United States Court of Appeals for the Federal
`Circuit decision in GE Lighting Solutions, LLC v.
`Agilent, Inc., Appeal No. 2013-1267 (May 1, 2014)
`iv
`
`ZEISS 1017
`
`ZEISS 1018
`
`ZEISS 1019
`
`ZEISS 1020
`
`ZEISS 1021
`
`ZEISS 1022
`
`ZEISS 1023
`
`ZEISS 1024
`
`ZEISS 1025
`
`ZEISS 1026
`
`ZEISS 1027
`
`ZEISS 1028
`
`ZEISS 1029
`
`ZEISS 1030
`
`ZEISS 1031
`
`ZEISS 1032
`
`
`
`
`
`Attorney Docket: 24984-0056IP1
`Proceeding: IPR2013-00362
`Cross-examination Transcript of Dr. Sasian for
`IPR2013-00362 on May 7, 2014
`U.S. Patent No. 7,450,300 (“Arriola Patent”)
`File History for U.S. Provisional Patent Application
`60/431,370 (“Arriola Provisional”)
`May 25, 2014 Declaration of Mr. Richard Juergens
`Cross-examination Transcript of Dr. Sasian for
`IPR2013-00363 on May 8, 2014
`Code V Sequence cited in ZEISS 1036
`
`Code V Sequence cited in ZEISS 1036
`
`Code V Sequence cited in ZEISS 1036
`
`Code V Sequence cited in ZEISS 1036
`
`Code V Sequence cited in ZEISS 1036
`
`Code V Sequence cited in ZEISS 1036
`
`Code V Sequence cited in ZEISS 1036
`
`Code V Sequence cited in ZEISS 1036
`
`Code V Sequence cited in ZEISS 1036
`
`Code V Sequence cited in ZEISS 1036
`
`Code V Sequence cited in ZEISS 1036
`
`Code V Sequence cited in ZEISS 1036
`
`v
`
`ZEISS 1033
`
`ZEISS 1034
`
`ZEISS 1035
`
`ZEISS 1036
`
`ZEISS 1037
`
`ZEISS 1038
`
`ZEISS 1039
`
`ZEISS 1040
`
`ZEISS 1041
`
`ZEISS 1042
`
`ZEISS 1043
`
`ZEISS 1044
`
`ZEISS 1045
`
`ZEISS 1046
`
`ZEISS 1047
`
`ZEISS 1048
`
`ZEISS 1049
`
`
`
`
`
`
`
`Attorney Docket: 24984-0056IP1
`Proceeding: IPR2013-00362
`Nikon’s Patent Owner Response (“POR”) hinges critically, and ultimately
`
`fatally, on unsupportably narrow constructions of independent claim 1 of U.S.
`
`Patent No. 7,348,575 (“the ‘575 Patent”), a misapplication of the law on prior art
`
`enablement, and a position on the issue of motivation that cannot be squared with
`
`either the intrinsic or the extrinsic evidence of record. The Board should cancel
`
`claim 1 pursuant to Zeiss’ Petition. Nikon does not argue for separate patentability
`
`of the other Challenged Claims, dependent claims 2-3, 8-12, 16-20, 23-26, and 29-
`
`33, and they too should be canceled pursuant to Zeiss’ Petition.
`
`1. Nikon’s unsupportably narrow constructions for “boundary
`lens” and the claim preamble
`
`Nikon’s POR rests almost entirely on two claim construction positions—one
`
`explicit and the other implicit—that together postulate a claim scope far narrower
`
`than either the claim language or the intrinsic record reflects.
`
`The explicit claim construction issue is “boundary lens,” a term that is clear
`
`on its face, and that when read in context with the rest of claim 1, plainly and
`
`simply means “the last lens element of the projection optical system,” as the Board
`
`found. (Decision, Paper No. 10 (“Dec.”) at 5.)
`
`For its construction of this simple two-word claim term, Nikon proposes a
`
`nuanced and carefully crafted thirty-five-word construction that is plainly driven
`
`by the issues in this IPR, not the intrinsic record: “a lens of the projection optical
`
`system that has a convex object-side surface and a flat image-side surface to
`1
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`
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`Attorney Docket: 24984-0056IP1
`Proceeding: IPR2013-00362
`increase effective NA in the presence of the immersion liquid by reducing
`
`reflection loss.” Nikon contends that these details are all required features of the
`
`claim, on the basis of the passage at 5:22-31, and the exemplary embodiments of
`
`Tables 1-11. (POR 16, 17, 38.) Nikon identifies nothing in those portions of the
`
`specification that constitute lexicography or disavowal of the plain and ordinary
`
`meaning of “boundary lens,” especially under the “broadest reasonable
`
`construction” standard required for inter-partes review (“IPR”). Thorner v. Sony
`
`Computer Entertainment America LLC, 669 F.3d 1362, 1365-7 (Fed. Cir. 2012)
`
`(admonishing against constructions that read limitations from the specification into
`
`the claims, or redefine words, absent an express definition or clear disavowal); 37
`
`CFR § 42.100(b).
`
`Neither claim 1, nor the passage at 5:22-31 of the ‘575 Patent, refers to any
`
`“flat image-side surface” for the claimed boundary lens, let alone imposes that as a
`
`requirement. To the contrary, claim 1 expressly recites “a positive refractive
`
`power” for the object-side surface, but imposes no restrictions on the image-side
`
`surface side of the boundary lens. With respect to the increased NA, the cited
`
`passage simply explains that for certain embodiments of the projection optical
`
`system having the boundary lens a large NA “can be secured,” and that if the
`
`separately claimed high-index immersion liquid is present, “it is feasible to
`
`increase the effective image-side numerical aperture to not less than 1.0.” (ZEISS
`
`
`
`2
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`
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`Attorney Docket: 24984-0056IP1
`Proceeding: IPR2013-00362
`1001, 5:22-31, emphasis added.) This is neither lexicography nor disavowal. GE
`
`Lighting Solutions, LLC v. Agilent, Inc., CAFC No. 2013-1267, slip op. (Fed. Cir.
`
`May 1, 2014). (ZEISS 1032, pp. 5-7.)
`
`Indeed, Nikon’s construction does not even make technical sense. It is not
`
`the “boundary lens” that “increase[s] effective NA in the presence of the
`
`immersion liquid by reducing reflection loss.” Nikon’s expert, Dr. Sasian,
`
`conceded in cross examination that “it’s the whole system” that can be designed to
`
`realize a higher NA when an immersion liquid is used between the boundary lens
`
`and the image plane. (ZEISS 1033, 39:19-23, 40:14-19.)
`
`Finally, Nikon’s reliance on the direct testimony by Dr. Sasian should be
`
`given no weight, given that he acknowledged during that he could not recall
`
`whether he even performed a claim construction, let alone one under the “broadest
`
`reasonable construction standard.” (Id., 51:13-52:12, 150:24-151:6, 168:12-19,
`
`168:22-170:9, 171:20-172:24.) For all it appears, Dr. Sasian was simply
`
`describing characteristics of a preferred embodiment of a boundary lens in the
`
`specification. (Id., 51:13-20.) Although Dr. Sasian never saw the Board’s
`
`construction for “boundary lens,” (Id., 24:13-20, 25:17-25),1 when asked in cross-
`
`1 If the Board rejects Nikon’s construction for “boundary lens,” Dr. Sasian’s
`
`testimony should be disregarded because he did not review the Board’s
`
`construction for “boundary lens,” let alone apply it. (Id., 24:13-20, 25:17-25.)
`
`
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`3
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`Attorney Docket: 24984-0056IP1
`Proceeding: IPR2013-00362
`examination to apply it to Terasawa, he confirmed that all of the limitations of
`
`claim 1, except the immersion limitation, are disclosed in the catadioptric
`
`projection optical system of Fig. 5 in Terasawa. (Id., 64:7-69:9.)
`
`The second claim construction issue is implicit, and pervades Nikon’s
`
`assertion that the Terasawa reference is not enabling. Specifically, Dr. Sasian
`
`testified that in forming his opinions, including with regard to enablement, he
`
`limited the “catadioptric projection optical system” set out in the preamble of claim
`
`1 to precisely the subject matter described in the field of the invention at 1:18-23,
`
`i.e., “a high resolution catadioptric projection optical system suitable for exposure
`
`apparatus used in production of semiconductor devices, liquid crystal display
`
`devices, etc., by photolithography.” (Id., 57:16-58:15, 63:21-64:5, 102:13-21).
`
`Dr. Sasian further testified that this “high-resolution” required to enable the full
`
`scope of claim 1 was “sub 100 nm resolution.” (Id., 104:18-105:2, 106:5-9.)
`
`Here too there is nothing in the specification that so limits the claims. There
`
`is no lexicography. There is no disclaimer. Claim 1 purports to cover benchtop
`
`prototypes and commercial lithography systems alike. Yet it is clear, as discussed
`
`in the following section, that in concluding that the prior art does not enable
`
`modifying Terasawa’s system for immersion, both Nikon and Dr. Sasian imposed
`
`on the prior art a stringent set of commercial-level specifications, and in effect
`
`required disclosure of fine engineering details that are not even in the ‘575 Patent.
`
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`4
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`Attorney Docket: 24984-0056IP1
`Proceeding: IPR2013-00362
`2. Nikon does not and cannot establish that a POSITA would not
`have had a reasonable expectation of success to modify
`Terasawa to implement immersion
`
`As a threshold matter, Nikon does not appear to dispute that it bears the
`
`burden of showing that the prior art was not enabling. A prior art patent is
`
`presumptively enabled. In re Antor Media Corp., 689 F.3d 1282, 1288-89 (Fed.
`
`Cir. 2012). Where Nikon errs as a matter of law on the enablement issue is its
`
`incorrect assertion that the prior art must “enable the full scope of claim 1.” (POR
`
`35.) This is the legal standard that Dr. Sasian was asked to apply. (Ex. 2014 ¶
`
`113, emphasis added.) Nikon has confused the enablement standards to which it is
`
`held in showing that claim 1 is enabled by its own specification with the
`
`enablement standard that Zeiss must meet with regard to the prior art. Specifically,
`
`for invalidity purposes, the prior art need only enable a single embodiment within
`
`the scope of claim 1, not the full scope of the claim. Muniauction, Inc. v. Thomson
`
`Corp., 532 F.3d 1318, 1328 n.4 (Fed. Cir. 2008) (Noting “the long-established rule
`
`that ‘claims which are broad enough to read on obvious subject matter are
`
`unpatentable even though they also read on nonobviousness subject matter.’”).
`
`Nor need a prior art reference enable unclaimed subject matter. Verizon Services
`
`Corp., 602 F.3d 1325, 1337 (Fed. Cir. 2010).
`
`Under the correct legal standards, most of Nikon’s enablement critiques are
`
`simply off-point. For example, there is nothing in claim 1 that requires the claimed
`
`
`
`5
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`Attorney Docket: 24984-0056IP1
`Proceeding: IPR2013-00362
`projection optical system to be “compact,” have “excellent imaging performance,”
`
`reduce “reflection loss on optical surfaces,” minimize “optical beam separation;”
`
`address problems such as “beam separation,” “field height,” “getting rays past the
`
`mirror pupil,” “color correction;” “or have an “NA above 1.” (POR 12-14, 34, 42.)
`
`In fact, as noted above, there is nothing in claim 1 that even limits the claimed
`
`system to lithography, let alone a commercial lithography system “that achieves
`
`the next technology node” with minimal aberrations. (POR 32-33, 44, 51.)
`
`So too should the Board disregard Nikon’s criticism of the cited prior art for
`
`allegedly failing to address “thermal problems, issues relating to handling, optical
`
`transmission, bubbles, micro-bubbles, fluid stability, index uniformity, and
`
`contamination” and “thermal and mechanical problems” such as “index of
`
`refraction variations on the last lens or on the immersion fluid.” (POR 39, 41.)
`
`Not only is there nothing in claim 1 to address such problems, but Dr. Sasian could
`
`not identify anything in the ‘575 Patent that purportedly addresses such problems.
`
`(ZEISS 1033, 90:6-9, 122:18-123:18.) SRI Intern., Inc. v. Internet Sec. Systems,
`
`Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (holding that a prior art reference
`
`providing the same or similar level of disclosure as the challenged patent generally
`
`meets the lower requirement for prior art to be enabling.).
`
`All of Dr. Sasian’s testimony in support of Nikon’s position that a person of
`
`ordinary skill in the art (“POSITA”) would not have had a reasonable expectation
`
`
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`6
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`Attorney Docket: 24984-0056IP1
`Proceeding: IPR2013-00362
`of success to modify Terasawa to implement immersion should be disregarded
`
`because it is based on both incorrect legal standards, and an improper claim
`
`construction that essentially limits the claim to a commercial embodiment for sub-
`
`100 nm lithography as part of an integrated circuit manufacturing system.
`
`Moreover, Dr. Sasian ultimately conceded in cross-examination that a
`
`POSITA could have addressed these alleged implementation challenges at the time
`
`of the alleged invention. While he initially identified several problems (ZEISS
`
`1033, 70:3-71:11 and 122:6-123:11), Dr. Sasian later conceded that a POSITA in
`
`2003 could have modified the Terasawa housing to hold the immersion fluid (Id.,
`
`76:9-18), and further that this POSITA could have addressed the remaining
`
`problems by using experiments and techniques “comparable” to those used prior to
`
`2003 to study other materials used in lithography projection systems. (Id., 80:13-
`
`87:13, especially 83:10-20, 84:13-23, 87:4-13.)
`
`The Immersion Reference Switkes also objectively demonstrates that there
`
`was a reasonable expectation of success in 2003 that prior art dry projection
`
`optical system (“conventional tools” and “conventional designs”) could be
`
`modified into an immersed system within the scope of claim 1, because much of
`
`the dry technology could be used in the immersed systems. For example:
`
`[S]ince only the final optical element and its housing, the wafer, and
`the stage are in contact with the immersion fluid, much of the
`technology and design developed for conventional tools in areas such
`
`
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`7
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`
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`Attorney Docket: 24984-0056IP1
`Proceeding: IPR2013-00362
`as contamination control, masks and pellicles, illuminator design, and
`so on will carry over directly to immersion.
`(ZEISS 1010, p. 459; see also p. 461 “…conventional designs.”)
`
`The fact that Switkes recognizes the need for further work to achieve a fully
`
`optimized tool for commercial use is irrelevant, since claim 1 imposes no such
`
`requirement, and the legal standard for establishing a reasonable expectation of
`
`success is not so stringent. CFMT, Inc. v.Yieldup Intern. Corp., 349 F.3d 1333,
`
`1383 (Fed. Cir. 2003) (reversing non-enablement judgment because enablement
`
`does not require one “to meet the lofty standards for success in the commercial
`
`marketplace.”) Moreover, Zeiss’ expert, Mr. Juergens, testified that a POSITA
`
`would not need further details than those in Switkes to know how to modify a dry
`
`system to implement immersion in order to achieve an embodiment within the
`
`scope of claim 1. (Ex. 2021 198:17-200:15; ZEISS 1011 ¶ 210.)
`
`Finally, Nikon in support of its enablement challenge to Terasawa makes the
`
`factual assertion that the ‘575 Patent family was the first to disclose “how to make
`
`and use a catadioptric projection optical system that could be used for immersion
`
`lithography.” (POR 25; see also similar statements at POR 9, 44.) This is
`
`demonstrably incorrect. For example, U.S. Patent No. 7,450,300 (“the Arriola
`
`Patent”) was filed as a PCT Application on December 4, 2003, and claims benefit
`
`of U.S. Provisional Application No. 60/431,370 (“the Arriola Provisional”) filed
`
`December 6, 2002, and is therefore prior art to the 575 Patent under at least Section
`
`
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`8
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`Attorney Docket: 24984-0056IP1
`Proceeding: IPR2013-00362
`102(e). (ZEISS 1034-1035.) The Arriola Patent and Provisional (collectively
`
`“Arriola”) disclose an immersed inline catadioptric projection objective having an
`
`NA=1.1 for use in microlithography, including a detailed lens prescription.
`
`(ZEISS 1034 at FIGS. 8A and 8B, 2:18-36, 3:1-4, 8:27-9:61, TABLE 6; ZEISS
`
`1035 at FIGS. 8A and 8B, 5:28-6:9, 6:30-32, 16:4-18:6, Table 6.) Arriola also
`
`discloses a corresponding dry inline catadioptric projection objective having an
`
`NA =0.8, including a detailed lens prescription. (ZEISS 1034 at FIGS. 11A and
`
`11B; 3: 1-13, 10:7-53, TABLE 7; ZEISS 1035 at FIGS. 11A and 11B, 7:5-7,
`
`18:25-19:19, Table 7.) Arriola explains that the two designs are very similar,
`
`except the last lens element from the immersed design is removed from dry design
`
`and “the optical design is reoptimized for dry operation.” (ZEISS 1034 at 10:9-13;
`
`ZEISS 1035 at 18:26-29.) For example, Arriola explains that “it will be obvious
`
`[that] … variations of the basic design include adding aspheric surfaces to one or
`
`more of the elements, adding or eliminating optical elements, and including in part
`
`other types of lens material.” (ZEISS 1034 at 10:54-60, ZEISS 1035 at 20:1-5.)
`
`Arriola demonstrates that prior to Nikon’s alleged invention, it was known
`
`how to design a catadioptric microlithography projection optical system for
`
`operation under either dry or immersed operation, and how to reoptimize the
`
`design to switch operation between the two. Arriola’s express teachings for such
`
`reoptimization are substantially similar to those repeatedly identified by Zeiss’
`
`
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`9
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`
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`Attorney Docket: 24984-0056IP1
`Proceeding: IPR2013-00362
`expert during his testimony. (ZEISS 1016 ¶¶ 23, 221, 230-231, 236; Ex. 2021
`
`218:21-219:24, 230:11-232:9, 239:9-241:22.)
`
`Ulrich likewise describes how a prior art “dry” system can be adapted for
`
`immersion by using a high-NA monochromate immersion microscopy lens system
`
`for the lenses closest to the wafer, and using routine optimization (“scaling of the
`
`partial focal widths,” “splitting thick lenses,” and “adding aspheres”) to achieve a
`
`sufficient level of performance (i.e., sufficiently low imaging aberrations). (ZEISS
`
`1011 166-167; ZEISS 1016 ¶¶ 219-224.) Such routine optimization is similar to
`
`what was described above in Arriola, and Ulrich expressly states that “the results
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`of these new design studies on all-refractive immersion design studies on all-
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`refractive immersion designs can be applied to other design concepts such as
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`catadioptric designs with similar results.” (ZEISS 1011 167:14-15.)
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`When pressed during cross-examination to explain what a POSITA would
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`have needed to take into account when modifying a catadioptric system for
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`immersion as opposed to a dioptric system, all that Dr. Sasian could identify was
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`chromatic aberration. (ZEISS 1033, 92:24-93:17.) Yet he went on to concede that
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`is in fact easier to correct for chromatic aberration in a catadioptric system, and
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`that it has been known since at least 1995 how to correct chromatic aberration in a
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`catadioptric system. (Id., 93:18-94:5, 95:22-96:4.) While Nikon contends that
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`catadioptric systems also require considerations of “beam separation” that are not
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`Attorney Docket: 24984-0056IP1
`Proceeding: IPR2013-00362
`present in dioptric systems (see, e.g., POR 6, 34), Dr. Sasian acknowledged in both
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`cross- and redirect examination that the basic layout of the prior art catadioptric
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`design in Fig. 5 of Terasawa, solves the beam separation issue. (Id., 117:16-
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`118:11, 157:17-158:11.)
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`Finally, Nikon also bases its enablement defense on a few passages from the
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`2005 Zeiss article (Ex. 2005) that make reference to “surprising” results. (See e.g.
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`POR 6, 27, 34, 46.) In doing so, Nikon takes these passages seriously out of
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`context. Dr. Sasian conceded during cross-examination that the first two
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`“surprises” discussed in the Zeiss article concern a folded design that is outside the
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`scope of claim 1. (Ex. 2005, p. 3; ZEISS 1033, 106:10-110:13, especially 109:13-
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`110:13.) The third and final “surprise” discussed in the Zeiss article concerned
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`“the introduction of additional intermediate images.” (Ex. 2005, p. 5.) As to this,
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`Dr. Sasian confirmed that such “additional intermediate images” are not recited in
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`claim 1. (ZEISS 1033, 110:15-111:25, especially, 111:21-25.)
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`3. A POSITA in 2003 would have been able to use optical design
`software to modify the lens prescription in Terasawa to
`implement immersion to increase NA and/or DOF
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`The Petition explains that a POSITA would have had a reasonable
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`expectation of success to modify the catadioptric designs in Terasawa to
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`implement immersion, and points to Ulrich as evidence of the high skill in this art
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`to support this conclusion, as well as testimony from Mr. Juergens. (Pet. 50-56.)
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`In this regard, Mr. Juergens repeatedly testified in cross-examination that it
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`would have been a matter of routine optical design to modify the lens prescriptions
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`for the dry designs in Terasawa to implement immersion. (Ex. 2021, 185:11-
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`186:19, 218:21-220:24, 227:9-228:14, 230:11-232:15, 239:9-241:22.) While
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`Nikon criticizes Zeiss for not having Mr. Juergens actually carry out such
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`modifications using optical design software (POR 34-35), Nikon’s POR fails to
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`identify any optical design simulations by its expert, Dr. Sasian, or anyone else, to
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`show that such modifications were not routine. Indeed, Dr. Sasian testified that he
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`did not do any such testing, nor was he made aware of any such testing. (ZEISS
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`1033, 173:15-174:5.)
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`Moreover, because Nikon has raised this as an issue in its POR, Mr.
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`Juergens has since used the optical design software CODE V, which was available
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`to POSITA in 2003, to modify the lens prescription for Fig. 5 in Terasawa to
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`produce new lens prescriptions that implement immersion in increase NA and
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`DOF. (ZEISS 1036, ¶¶ 1-50.) The detailed modifications follow from his original
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`and cross-examination testimony, which as noted above, is substantially similar to
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`those described in prior art references Ulrich and Arriola (e.g., varying aspheric
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`coefficients, varying thickness and/or curvature, splitting lenses, adding or
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`eliminating optical elements). (ZEISS 1036, ¶¶ 5-14.) Mr. Juergens showed that a
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`POSITA could have used CODE V to redesign the optical prescription for FIG. 5
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`Attorney Docket: 24984-0056IP1
`Proceeding: IPR2013-00362
`in Terasawa by adding an immersion fluid between the last lens surface and the
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`wafer to increase DOF, adjusting the thicknesses and curvatures of certain lenses,
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`and re-optimizing the aspheric coefficients of the system to obtain an imaging
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`performance as good as, or better than, the original dry design. (ZEISS 1036, ¶¶
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`15-31, 43-47.) Moreover, Mr. Juergens showed a POSITA could have further used
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`CODE V to increase the NA of the system from NA = 0.6 to NA > 1.0 by varying
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`the thicknesses and curvatures of additional elements, and re-optimizing the
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`aspheric coefficients. (ZEISS 1036, ¶¶ 32-42.) Mr. Juergens’ detailed
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`modifications here once again confirm that a POSITA would have had a
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`reasonable expectation of success to modify the dry inline, off-axis catadioptric
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`designs in Terasawa to implement immersion to increase NA and/or DOF. If Mr.
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`Juergens, whom Nikon contends does not even have the skillset of a POSITA (see
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`POR 35-38), can so readily modify the optical designs in Terasawa to implement
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`immersion, than certainly a POSITA would have had a reasonable expectation of
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`success of achieving that result.2
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`2 Nikon cannot credibly maintain that Mr. Juergens is not an expert in optical
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`design who is qualified to offer opinions in this matter. (ZEISS 1016 ¶¶ 2-9;
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`ZEISS 1028.) In fact, for the last 8-10 years, Dr. Sasian has invited Mr. Juergens
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`to provide guest lectures as part of Dr. Sasian’s class on Len Design at the
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`University of Arizona. (ZEISS 1037, 9:18-23, 11:7-21.) Dr. Sasian also conceded
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`13
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`Attorney Docket: 24984-0056IP1
`Proceeding: IPR2013-00362
`Indeed, during cross-examination Dr. Sasian confirmed that prior to 2003 a
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`POSITA could have used optical design software tools such as CODE V “to
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`evaluate whether immersion fluid could be added to Terasawa.” (ZEISS 1033,
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`178:10-25.) He also testified that a POSITA could have used such tools to use
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`immersion to increase the NA of the Terasawa from the NA = 0.6 for the dry
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`design. (Id., 180:17-181:6 – “a few percent [increase in NA] may been feasible.”)
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`Moreover, when pressed to list all of the challenges a POSITA would have had to
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`modify the Terasawa Fig. 5 design to increase NA by implementing immersion,
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`Dr. Sasian ultimately conceded that CODE V “could have been used prior to 2003
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`to correct these aberrations.” (Id., 182:15-183:25.) Similarly, with respect to using
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`an immersion fluid to increase DOF, Dr. Sasian testified during cross-examination
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`that a POSITA as of 2003 would have known how to correct for the aberrations
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`introduced by the immersion fluid. (Id., 120:11-121:20.)
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`4. There was motivation to modify Terasawa to increase DOF
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`Nikon argues that a POSITA would have only have been motivated to use
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`immersion to increase NA to over 1, and that there was no motivation to use
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`immersion to use immersion to increase DOF. (POR 41-43.) Here too Nikon is
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`contradicted by both the intrinsic and extrinsic evidence, including the testimony
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`on cross-examination that Mr. Juergens is an expert on many aspects of optical
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`design. (Id., 9:11-13, 10:11-11:6, 13:6-17, 14:21-15:5.)
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`Attorney Docket: 24984-0056IP1
`Proceeding: IPR2013-00362
`of its own expert, who conceded that a POSITA would have been motivated to use
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`immersion both to increase NA and to increase DOF. (ZEISS 1033, 137:6-138:4.)
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`
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`Nikon’s position is even contrary to the ‘575 patent itself, which identifies
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`DOF as one of the achievements of immersion in the disclosed embodiments.
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`(ZEISS 1001, 16:35-37; 18:65-19:1; 55:46-51.) It also expressly contemplates
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`using immersion in systems having an NA less than 1. (ZEISS 1001, 56:3-5.)
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`Fukami, another Nikon patent document, also expressly teaches using
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`immersion to increase DOF (ZEISS 1012, 1; ZEISS 1015 2:13-28, 3:22-28, 21:14-
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`19), and explains that: “the depth of focus (DOF) is as important as the resolution
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`when performing an exposure.” (Id., 1:32-33; see also 2:18-20.)
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`Finally, even assuming arguendo that using immersion to increase NA might
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`have been weighted more heavily than using immersion to increase DOF, that does
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`not mean that there was no motivation to increase DOF. In re Mouttet, 686 F.3d
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`1322, 1344 (Fed. Cir. 2012) (affirming obviousness rejection despite prior art
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`combination being allegedly inferior for certain purposes.)
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`
`
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`Date: May 28, 2014
`
`
`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (612) 337-2508
`Facsimile: (612) 288-9696
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`Respectfully submitted,
`
` /Marc M. Wefers Reg. No .56,842/
`Marc M. Wefers
`Reg. No. 56,842
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`Attorney Docket: 24984-0056IP1
`Proceeding: IPR2013-00362
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on May 28, 2014, a complete and entire copy of this Petitioner’s Reply to
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`Patent Owner’s Response, with exhibits, were provided via email to the Patent
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`Owner by serving the correspondence email addresses of record as follows:
`
`John S. Kern
`Robert C. Mattson
`OBLON SPIVAK
`1940 Duke Street
`Alexandria, VA 22314
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`Email: CPdocketKern@oblon.com
`Email: CPdocketMattson@oblon.com
`
`
`
`
`
`
`
`
`
`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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