UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CARL ZEISS SMT GMBH
`Petitioner
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`v.
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`NIKON CORPORATION
`Patent Owner
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`Case IPR2013-00362
`Patent 7,348,575
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`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATION REGARDING SECOND CROSS EXAMINATION OF
`RICHARD C. JUERGENS
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CARL ZEISS SMT GMBH
`Petitioner
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`v.
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`NIKON CORPORATION
`Patent Owner
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`Case IPR2013-00362
`Patent 7,348,575
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`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATION REGARDING SECOND CROSS EXAMINATION OF
`RICHARD C. JUERGENS
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`Case IPR2013-00362
`Attorney Docket: 24984-0056IP1
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`TABLE OF CONTENTS
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`A. Testimony Demonstrating that Mr. Juergens used only Features and Functions
`in CODE V that were available in 2003 .............................................................. 3
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`B. Testimony Demonstrating that Mr. Juergens’ Experiments Show That the Prior
`Art Would Have Enabled a POSITA to Make the Claimed Invention ............... 6
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`C. Testimony Regarding Alleged Beam Overlap in Mr. Juergens’ Experiments .. 10
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`D. Testimony Regarding the Alleged Image Quality of Terasawa’s Projection
`Optical System ................................................................................................... 12
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`2
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`As authorized by the Board in its Order – Conduct of the Proceeding, Paper
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`Case IPR2013-00362
`Attorney Docket: 24984-0056IP1
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`23, Petitioner Carl Zeiss (“Zeiss”) hereby responds to Patent Owner Nikon’s
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`Motion for observation of certain portions of the second cross examination of
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`Petitioner’s expert witness, Mr. Richard C. Juergens (“Nikon’s Observations”).
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`A.
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`1.
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`Testimony Demonstrating that Mr. Juergens used only Features
`and Functions in CODE V that were available in 2003
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`In Ex. 2040, on page 21, line 17 – page 22, line 2, Mr. Juergens
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`testified that he was familiar with CODE V version 9.2, the version of CODE V
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`available in 2003, and had used it in his course of work as an optical designer.
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`This testimony is relevant to sections A-1 and A-2 of Nikon’s Observations
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`because it contradicts Nikon’s conclusions in those sections that neither Mr.
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`Juergens nor Petitioner have any way of confirming that the “functions and
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`features” Mr. Juergens used in version 10.6 of CODE V would have been available
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`to a POSITA in 2003.
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`2.
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`In Ex. 2040, page 22, line 15 – page 23, line 9, Mr. Juergens testified
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`that he was aware CODE V had been released several times with new
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`improvements since 2003 in order to fix bugs in the program, add new features,
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`and improve existing features.
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`3
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`In Ex. 2040, page 26, lines 3-17, when asked how he could be certain
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`Case IPR2013-00362
`Attorney Docket: 24984-0056IP1
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`3.
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`that he only used functions and features that were available in the 2003 version of
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`CODE V, Mr. Juergens testified that:
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`…in 1999 I changed jobs. And prior to that, I worked for the company
`that put out CODE V. At the time, that company was named Optical
`Research Associates. And while working for that company, I visited
`many customers teaching CODE V and giving seminars and
`instructions on how to use it. I visited, among other companies, I
`visited both Zeis [sic] and Nikon and I taught them how to use CODE
`V to optimize, in particular, lithographic systems. And I used those
`features and those techniques that I had taught back in that time
`frame.
`This testimony is relevant to sections A-1 and A-2 of Nikon’s Observations
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`because it contradicts Nikon’s conclusions in those sections that neither Mr.
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`Juergens nor Petitioner have any way of confirming that the “functions and
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`features” Mr. Juergens used in version 10.6 of CODE V would have been available
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`to a POSITA in 2003.
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`4.
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`In Ex. 2040, on page 30, line 16, through page 46, line 16, Mr.
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`Juergens testified that he did not use any of the multiple new features added in
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`various versions of CODE V released since 2003 that were identified by Nikon’s
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`counsel in Experiments I-IV. See, page 30, line 16 – page 33, line 11, addressing
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`features in version 9.8; page 33, line 12 – page 36, line 4, addressing features in
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`4
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`version 10.1; page 36, line 5 – page 37, line 7, addressing features in version 10.2;
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`Case IPR2013-00362
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`page 37, line 8 – page 40, line 9, addressing features in version 10.3; page 40, line
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`10 – page 41, line 8, addressing features in version 10.4; page 41, line 9 – page 42,
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`line 22, addressing features in version 10.5; page 43, line 3 – page 46, line 16,
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`addressing features in version 10.6. This testimony is relevant to sections A-1 and
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`A-2 of Nikon’s Observations because it contradicts Nikon’s conclusions in those
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`sections that neither Mr. Juergens nor Petitioner have any way of confirming that
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`the “functions and features” Mr. Juergens used in version 10.6 of CODE V would
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`have been available to a POSITA in 2003.
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`5.
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`In Ex. 2040, on page 50, line 14 – page 51, line 2, Mr. Juergens
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`testified, on the basis that he is an expert in CODE V and knows what features
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`were available in 2003, that it was not possible that the improvements made to
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`CODE V since 2003 could have affected his optimization analysis. This testimony
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`is relevant to sections A-1 and A-2 of Nikon’s Observations because it contradicts
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`Nikon’s conclusions in those sections that neither Mr. Juergens nor Petitioner have
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`any way of confirming that the “functions and features” Mr. Juergens used in
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`version 10.6 of CODE V would have been available to a POSITA in 2003.
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`6.
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`In Ex. 2040, on page 135, line 3 – page 136, line 16, Mr. Juergens
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`testified that while the computer he used to perform Experiments I-IV using CODE
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`V was more powerful than a computer in 2003, computers in 2003 using CODE V
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`5
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`would get to the same answer as today’s computers though they would take longer
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`Case IPR2013-00362
`Attorney Docket: 24984-0056IP1
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`to perform optical design experiments. This testimony is relevant to sections A-1
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`and A-2 of Nikon’s Observations because it contradicts Nikon’s conclusions in
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`those sections that neither Mr. Juergens nor Petitioner have any way of confirming
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`that the “functions and features” Mr. Juergens used in version 10.6 of CODE V
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`would have been available to a POSITA in 2003.
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`B.
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`1.
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`Testimony Demonstrating that Mr. Juergens’ Experiments Show
`That the Prior Art Would Have Enabled a POSITA to Make the
`Claimed Invention
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`In Ex. 2041, on page 10, lines 2-5 and 15-24, Mr. Juergens testified he
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`spent “40 to 60 hours” conducting experiments, approximately half of which were
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`Experiments I-IV, described in his Supplemental Declaration. This testimony is
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`relevant to Mr. Juergens’ later testimony in Ex. 2040, on page 120, lines 18-23,
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`where Mr. Juergens testified that he “was not designing a finished completed
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`optical system that would be suitable for lithography. The goal was to see if I
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`could increase the numerical aperture in the Terasawa design, and I believe I
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`proved that.” This testimony is further relevant to Mr. Juergens later testimony in
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`Ex. 2040, on page 129, lines 11- 23, where Mr. Juergens testified that a person of
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`ordinary skill in the art designing a projection optical system for use in
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`microlithography would optimize for more than two field points and it would “take
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`a lot longer than the week or so” that Mr. Juergens took to do his optimizations.
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`Collectively, this testimony is relevant to section B of Nikon’s Observations where
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`Nikon identifies testimony from Mr. Juergens that allegedly demonstrates that Mr.
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`Juergens’ experiments fail to show that the prior art would have enabled a POSITA
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`to make the claimed invention, because it shows that Mr. Juergens’ intention was
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`not to design a finished completed optical system suitable for lithography, which is
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`not required by claim 1.
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`2.
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`In Ex. 2040, on page 69, lines 11-23, Mr. Juergens testified that he
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`considered that two field points were sufficient to establish that it was
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`“straightforward and easy” to add immersion to Terasawa’s design. In Ex. 2040,
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`on page 102, line 7 – page 103, line 17, Mr. Juergens testified that, in one
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`experiment, he demonstrated that, by adding immersion to Terasawa’s Original
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`Lens and optimizing for two field points, he was able reduce RMS wavefront error
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`to 0.021 waves at the two field points while increasing depth of focus relative to
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`Terasawa’s Original Lens. In Ex. 2040, on page 129, line 24 – page 130, line 17,
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`Mr. Juergens further testified that a person of ordinary skill in the art would add
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`field points to their optimization to get the desired image quality over the whole
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`field. In Ex. 2040, at page 132, lines 2 – 22, Mr. Juergens testified that he was able
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`to come up with a design that has a required numerical aperture and reasonable
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`image quality in at least a couple of points in the field. Here, Mr. Juergens further
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`testified that optimizing over the whole field would merely change some of the
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`aspherical coefficients and some of the curvatures, and that it would take “another
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`Attorney Docket: 24984-0056IP1
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`week or two” to lower the RMS wavefront error across the entire field. In Ex.
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`2040, at page 136, line 24 – page 137, line 20, Mr. Juergens further testified that a
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`person of ordinary skill in 2003 would have been able to optimize a design for a
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`third field point by going through the exact same motions and exact same actions
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`as he had before. This testimony is relevant to section B of Nikon’s Observations
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`where Nikon identifies testimony from Mr. Juergens that allegedly demonstrates
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`that Mr. Juergens’ experiments fail to show that the prior art would have enabled a
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`POSITA to make the claimed invention because it demonstrates that a POSITA
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`could reduce RMS wavefront error for additional field points using exactly the
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`same technique that Mr. Juergens used for the first two field points.
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`3.
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`In Ex. 2041, on page 52, line 13 – page 53, line 10, Mr. Juergens
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`testified that, in the context of claim 1 of the ‘575 patent, an “image” is “a picture,
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`a reproduction, of the objective of the image surface,” it doesn’t have “a specific
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`meaning other than the obvious well-known meaning of the word ‘image’,” and
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`“there is nothing here that implies … how good the image has to be.” In Ex. 2040,
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`on page 96, line 16 – page 97, line 4, Mr. Juergens further testified that an increase
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`in RMS wavefront error from 0.021 to 183 waves causes “the image to become
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`blurry, but the system, nevertheless, still forms an image.” In Ex. 2040, on page
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`97, line 16 – page 98, line 1, Mr. Juergens additionally testified that an image
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`Attorney Docket: 24984-0056IP1
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`…could have any amount of wavefront error and still be an image. It
`can just be a very bad image or a moderately bad image. It depends
`upon your quality.
`Note that Claim 1 does not mention the image quality of the
`optical system. It simply says that it's a projection optical system. It
`makes no claim about image quality at all.
`In Ex. 2040, on page 118, lines 8-14, Mr. Juergens further testified that the goal of
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`experiment III was “to simply see if you could push the numerical aperture to a
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`larger value,” and not to “control distortion, to control RMS wavefront error over
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`the whole field, or to even worry about this obscuration.” This testimony shows
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`that Mr. Juergens did not consider claim 1 to place any limitation on the quality of
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`an “image” as recited in that claim. This testimony is relevant to section B of
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`Nikon’s Observations where Nikon identifies testimony from Mr. Juergens that
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`allegedly demonstrates that Mr. Juergens’ experiments fail to show that the prior
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`art would have enabled a POSITA to make the claimed invention. Because Mr.
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`Juergens did not consider claim 1 to place any limitation on the quality of an
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`“image” as recited in that claim, he did not intend his experiments to demonstrate
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`projection optical systems that have optimized image quality across the entire field.
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`This testimony is also further relevant to sections B-1 through B-3, B-5, and B-7,
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`because it contradicts Nikon’s conclusion in these sections that because
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`9
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`Experiments II-IV did not produce an immersed projection optical system that
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`Case IPR2013-00362
`Attorney Docket: 24984-0056IP1
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`forms an image, as recited in independent claim 1.1
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`C.
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`1.
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`Testimony Regarding Alleged Beam Overlap in Mr. Juergens’
`Experiments
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`In Ex. 2041, on page 52, line 13 – page 53, line 10, Mr. Juergens
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`testified that, in the context of claim 1 of the ‘575 patent, an “image” is “a picture,
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`a reproduction, of the objective of the image surface,” it doesn’t have “a specific
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`1 To the extent Nikon contend that “image” as recited in claim 1 should be
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`narrowly construed to require aberrations and distortion levels below a certain
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`numeric threshold across a certain field width, this is a new issue not previously
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`addressed in Zeiss’s Reply to Nikon’s Response or in any other paper previously
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`filed by Zeiss, and is thus improper. In its Order – Conduct of the Proceeding, the
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`Board expressly cautioned Nikon that “[a]n observation is not an opportunity to
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`raise new issues, to re-argue issues, or to pursue objections.” Paper 23 at 4.
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`(emphasis added). Notwithstanding the impropriety of raising this issue at this
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`stage, Nikon have not identified any intrinsic evidence that such a construction is
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`proper. In fact, the ‘575 patent does not disclose distortion levels for its objectives
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`at all, let alone disclose any definition of “image” requiring distortion levels below
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`a particular threshold. See, e.g., Ex. 2040, at page 134, lines 16 – 24, where Mr.
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`Juergens testified that he could find no distortion plots in the ‘575 patent.
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`10
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`meaning other than the obvious well-known meaning of the word ‘image’,” and
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`Case IPR2013-00362
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`“there is nothing here that implies … how good the image has to be.” In Ex. 2040,
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`on page 85, line 24 – page 86, line 24, Mr. Juergens testified that, in general, a
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`partial beam separation problem would “have very little impact on image quality”
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`and the main effect would be “loss of brightness.” In Ex. 2040, on page 97, line
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`16 – page 98, line 1, Mr. Juergens additionally testified that an image
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`…could have any amount of wavefront error and still be an image. It
`can just be a very bad image or a moderately bad image. It depends
`upon your quality.
`Note that Claim 1 does not mention the image quality of the
`optical system. It simply says that it's a projection optical system. It
`makes no claim about image quality at all.
`In Ex. 2040, on page 118, lines 8-14, Mr. Juergens further testified that the goal of
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`experiment III was “to simply see if you could push the numerical aperture to a
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`larger value,” and not to “control distortion, to control RMS wavefront error over
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`the whole field, or to even worry about this obscuration.” This testimony shows
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`that Mr. Juergens did not consider claim 1 to place any limitation on the quality of
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`an “image” as recited in that claim. This testimony is relevant to section C-4 of
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`Nikon’s Observations where Nikon identifies testimony from Mr. Juergens that
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`allegedly demonstrates that Mr. Juergens’ experiments fail to show that the prior
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`art would have enabled a POSITA to make the claimed invention. Because Mr.
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`11
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`Juergens did not consider claim 1 to place any limitation on the quality of an
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`Case IPR2013-00362
`Attorney Docket: 24984-0056IP1
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`“image” as recited in that claim, he did not intend to demonstrate in his
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`experiments projection optical systems having optimized image quality across the
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`entire field. This testimony also contradicts Nikon’s conclusion in section C-4 that
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`Mr. Juergens’ testimony shows that Mr. Juergens allegedly failed to design a
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`projection optical system that forms an image, as recited in independent claim 1.
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`2.
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`In Ex. 2040, page 118, lines 15-19, Mr. Juergens testified as follows:
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`Q. Were you told to disregard all other design characteristics in
`pushing the numerical aperture to a numerical value?
`A. I was not told in so many words to ignore those.
`(Emphasis added.) This testimony is relevant to section C-2 of Nikon’s
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`Observations because it shows that Nikon misrepresented this testimony as
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`allegedly showing “that Mr. Juergens was instructed to completely disregard
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`serious design considerations.”
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`D.
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`1.
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`Testimony Regarding the Alleged Image Quality of Terasawa’s
`Projection Optical System
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`In Ex. 2040, at page 133, line 15 to page 134, line 23, Mr. Juergens
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`testified that the ‘575 patent shows aberration plots for only three field points and
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`not the entire field width. This testimony is relevant to section D of Nikon’s
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`Observations where Nikon contend that Mr. Juergens Experiments I-IV are not as
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`good as or better than the original dry design in Terasawa because Mr. Juergens
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`12
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`experiments are corrected for only two field points and not the entire field width.
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`Case IPR2013-00362
`Attorney Docket: 24984-0056IP1
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`This testimony is relevant because it shows that like Mr. Juergens’ Experiments,
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`the ‘575 patent demonstrated aberration levels below a threshold RMS for only a
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`subset of field points and not the entire field width.
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`2.
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`In Ex. 2040, on page 74, line 23 – page 75, line 1, Mr. Juergens
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`testified that page 1 of Ex. 2036 “shows a plot of RMS performance versus field
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`position,” but Mr. Juergens did not agree that it shows the RMS wavefront error of
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`Example 2 in Terasawa. This testimony is relevant to section D of Nikon’s
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`Observations where Nikon contend that Mr. Juergens “testified in Example 2 of
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`Terasawa the aberration, including RMS wavefront error, is corrected for the entire
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`image height (i.e., field width) of 10 to 16 mm.” The testimony is relevant because
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`it shows that Mr. Juergens was testifying only about the plot of RMS performance
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`versus field Nikon’s counsel placed before him, not testifying about Example 2 in
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`Terasawa.
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` July 14, 2014
`Date:
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (617) 542-5070
`Facsimile: (617) 542-8906
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`Respectfully submitted,
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`/ Chris Bowley, Reg. No. 55,016 /
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`Chris C. Bowley
`Reg. No. 55,016
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`13
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`Case IPR2013-00362
`Attorney Docket: 24984-0056IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.6(e)(4)(iii), the undersigned
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`certifies that on July 14, 2014, a complete and entire copy of this Petitioner’s
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`Response to Patent Owner’s Motion for Observation Regarding Second Cross
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`Examination of Richard C. Juergens was provided via email to the Patent Owner
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`by serving the correspondence email address of record as follows:
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`John S. Kern
`Robert C. Mattson
`Oblon Spivak
`1940 Duke Street
`Alexandria, Virginia 22314
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`Email: CPdocketKern@oblon.com
`Email: CPdocketMattson@oblon.com
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`/Edward G. Faeth/
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`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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`14
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