DOCKET NO: 418599US
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CARL ZEISS SMT GMBH
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`Petitioner
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`v.
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`NIKON CORPORATION
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`Patent Owner
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`__________
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`Case IPR2013-00362
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`Patent 7,348,575
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`__________
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`PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO
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`EXCLUDE EVIDENCE
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________
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`CARL ZEISS SMT GMBH
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`Petitioner
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`v.
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`NIKON CORPORATION
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`Patent Owner
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`__________
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`Case IPR2013-00362
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`Patent 7,348,575
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`__________
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`PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO
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`EXCLUDE EVIDENCE
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`Case IPR2013-00362
`Patent Owner’s Reply in Support of its Motion to Exclude Evidence
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`TABLE OF AUTHORITIES
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`Page
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`Rules
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`Federal Rule of Evidence 401 .............................................................................. 1
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`Federal Rule of Evidence 403 .............................................................................. 5
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`Federal Rule of Evidence 406 .............................................................................. 5
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`ii
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`Case IPR2013-00362
`Patent Owner’s Reply in Support of its Motion to Exclude Evidence
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`Patent Owner Nikon submits this Reply in Support of its Conditional Motion
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`to Exclude Evidence (“Motion to Exclude”) and in response to Petitioner Zeiss’s
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`Opposition to Patent Owner’s Conditional Motion to Exclude Evidence (“Opp’n”).
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`As explained below, Petitioner has simply failed to show the relevance of Exhibits
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`1036 and 1038-1049 (“the Challenged Exhibits”) to this proceeding in the absence
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`of Patent Owner’s Exhibits 2036-2039 (“Exhibits Demonstrating Inoperability”).
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`In its Opposition, Petitioner does not (and cannot) dispute that the Exhibits
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`Demonstrating Inoperability reveal the false impression created by the new lens
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`designs described in the Challenged Exhibits.
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`Relevance is a fundamental requirement for the admissibility of all evidence
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`under the Federal Rules of Evidence (“FRE”). Evidence is only relevant if it both
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`“has any tendency to make a fact more or less probable than it would without the
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`evidence” and “the fact is of consequence in determining the action.” FRE 401.
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`Petitioner relies heavily on a straw man argument by characterizing Patent
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`Owner’s Motion to Exclude as solely an attack on the credibility of Petitioner’s
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`expert, Mr. Juergens. Although this proceeding certainly places Mr. Juergens’
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`opinions in jeopardy, Patent Owner’s Motion to Exclude is focused on the fact that
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`Mr. Juergens’ testimony and lens designs in the Challenged Exhibits are irrelevant
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`to any issue in this proceeding – unless they are viewed in conjunction with the
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`Exhibits Demonstrating Inoperability.
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`1
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`Case IPR2013-00362
`Patent Owner’s Reply in Support of its Motion to Exclude Evidence
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`Mr. Juergens’ analysis of his lens designs is studiously limited to the two
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`most extreme field points in the field width. That analysis – without the benefit of
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`the plots for the entire field width supplied in the Exhibits Demonstrating
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`Inoperability – neither makes any fact more or less probable nor is helpful in
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`determining the merits of this proceeding. Significantly, Petitioner appears to
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`concede that Mr. Juergens’ lens designs are unsuitable for a projection optical
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`system to form an effective imaging area – a requirement of every claim under
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`review. In fact, if Petitioner is correct that the quality of the images in the
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`Challenged Exhibits was irrelevant to enablement, then it would not have felt
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`compelled to submit the Challenged Exhibits in the first place because simply
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`immersing the Terasawa lens design without further modifications would result in
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`an immersed projection optical system, albeit one that is inoperable and could not
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`form an effective imaging area, as claimed. Likewise, Petitioner would not have
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`included the RMS wavefront error plots in the Challenged Exhibits unless it felt
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`that the quality of the image was important to the issue of enablement.
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`Petitioner places great weight on Mr. Juergens’ “appropriate” disabling of
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`software features that were unavailable in 2003. But even if Mr. Juergens disabled
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`the features functionality of CODE V that was not available in 2003, he had no
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`way of knowing whether the functions that he did use, and that were available in
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`2003, were less, more, or equally as powerful in the 2013 version of the software.
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`2
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`Case IPR2013-00362
`Patent Owner’s Reply in Support of its Motion to Exclude Evidence
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`However, Mr. Juergens had to admit that the features of CODE V that he used in
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`the 2013 were improved over subsequent releases, including improvements to the
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`optimization algorithms. (Ex. 2040, 23:6-17, 25:13-21, 30:12-15.) Thus, even if
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`Mr. Juergens was able to disable exactly the right set of features that were not
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`available in 2003, he had no way of knowing what improvements were made to the
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`features in the 2013 software that he used.
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`Most of Petitioner’s arguments with respect to relevance are based on the
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`mistaken premise that Mr. Juergens “arrive[d] at the claimed invention.” (Pet.
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`Opp’n 8:1-3.) To the contrary, Mr. Juergens’ lens designs described in the
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`Challenged Exhibits utterly fail to modify the projection optical system of
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`Terasawa (Ex. 1008) to arrive at the claimed invention. Specifically, even with the
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`benefit of 2013 software, Mr. Juergens was unable to conjure a “projection optical
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`system having an effective imaging area,” as required by each of the challenged
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`claims. (Ex. 1001, claim 1.) The Challenged Exhibits, when viewed without the
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`benefit of the Exhibits Demonstrating Inoperability, do not make it more or less
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`probable that the prior art was enabling or that POSITA would have had a
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`reasonable expectation of success in combining Terasawa with the Immersion
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`References to arrive at the claimed invention.
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`Further, Mr. Juergens admitted that he did not know whether testing only the
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`innermost and outermost field points, as he did, was the standard way of measuring
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`3
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`Case IPR2013-00362
`Patent Owner’s Reply in Support of its Motion to Exclude Evidence
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`RMS wavefront error. (Ex. 2040, 63:23-64:5.) When viewed alone, without plots
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`for the rest of the field width, the plots for only two field points, have no probative
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`value. Petitioner misleadingly suggests that a POSITA would have only plotted
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`two field points because the ‘575 patent only plots three field points (Opp’n 6).
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`However, Petitioner identifies no evidence that the ‘575 patent suffers from the
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`problems that plague the Challenged Exhibits.
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`The Challenged Exhibits provide an incomplete picture because they plot
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`only the two most extreme field points of the field width, and the error
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`measurements and plots for those two field points falsely suggest that the
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`Challenged Exhibits describe lens systems that can generate a focused image
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`without seeing separation problems. The Challenged Exhibits are only relevant in
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`the context of the Exhibits Demonstrating Inoperability. While modern optical
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`design software is irrelevant to the tool kit available to one of ordinary skill in the
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`art, it is relevant to show that the prior art is not enabling. For even with the latest
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`optical design software and the hindsight benefit of the ‘575 patent, Mr. Juergens
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`was unable to immerse the Terasawa lens design and create a usable projection
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`optical system.
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`With respect to Petitioner’s FRE 403 arguments (Opp’n 9-11), it would be
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`fundamentally unfair and prejudicial to the Patent Owner to permit Petitioner to
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`submit, for the first time with its Reply Brief, incomplete plots that neglect to
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`4
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`Case IPR2013-00362
`Patent Owner’s Reply in Support of its Motion to Exclude Evidence
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`reveal the performance of the new lens designs across their entire field widths. An
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`analogous situation would be for Petitioner to submit a foreign-language reference,
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`provide a partial translation, and then suggest that the entire reference supports a
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`proposition that the complete translation would reveal to be false. Such a result is
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`fundamentally unfair and is the reason why a full translation would be required in
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`that situation. (See also, for example, FRE 406, the Rule of Completeness).
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`Further, such a result permits petitioners to take advantage of the briefing schedule
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`in review proceedings and encourages future petitioners to “sandbag” patent
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`owners to deny them the ability to submit competing expert testimony to address
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`testing discussed for the first time in petitioners’ reply briefs.
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`Unless Patent Owner has an opportunity to present the complete story
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`behind the new lens designs by submitting the plots for the entire field widths of
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`the new lens designs, then the record provides the false impression that the prior art
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`is enabling when, in fact, Mr. Juergens was unable to optimize the prior art with
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`the latest optical design software to create an optical system.
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`*
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`*
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`*
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`For the foregoing reasons, the Board should exclude the Challenged
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`Exhibits, or admit into evidence both the Challenged Exhibits and the Exhibits
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`Demonstrating Inoperability.
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`5
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`Case IPR2013-00362
`Patent Owner’s Reply in Support of its Motion to Exclude Evidence
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`Dated: July 16, 2014
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`Respectfully submitted,
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`____
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`/John S. Kern/
`John S. Kern (Reg. No. 42,719)
`Attorney for Patent Owner
` Nikon Corporation
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`6
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`Case IPR2013-00362
`Patent Owner’s Reply in Support of its Motion to Exclude Evidence
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing PATENT OWNER’S
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`REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE EVIDENCE was served
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`via email (IPR24984-0056IP1@fr.com) on July 16, 2014 in its entirety, to the
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`following:
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`Marc M. Wefers
`Chris C. Bowley
`Lawrence K. Kolodney
`Kurt L. Glitzenstein
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth St.
`Minneapolis, MN 55402
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`____
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`/John S. Kern/
`John S. Kern (Reg. No. 42,719)
`Attorney for Patent Owner
` Nikon Corporation
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`Date: July 16, 2014
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