Trials@uspto.gov
`571-272-7822
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`
`
`
`
`
`
`
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` Paper 17
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`
`
` Entered: January 30, 2014
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CARL ZEISS SMT GMBH
`Petitioner
`
`v.
`
`NIKON CORPORATION
`Patent Owner
`
`
`Case IPR2013-00363
`Patent 7,348,575 B2
`
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`DECISISON
`ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
` Paper 17
`
`
`
` Entered: January 30, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CARL ZEISS SMT GMBH
`Petitioner
`
`v.
`
`NIKON CORPORATION
`Patent Owner
`
`
`Case IPR2013-00363
`Patent 7,348,575 B2
`
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`DECISISON
`ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`Case IPR2013-00363
`Patent 7,348,575 B2
`
`
`I.
`INTRODUCTION
`On December 27, 2013, Carl Zeiss SMT GmbH (“Petitioner”) filed a
`request for rehearing (Paper 10, “Req.”) of the Board’s decision (Paper 7,
`“Dec.”), dated December 16, 2013, which instituted inter partes review of
`claims 55-67 of Nikon Corporation’s (“Patent Owner”) U.S. Patent No.
`7,348,575 B2 (Ex. 1101, “the ’575 patent”). The Board granted Petitioner’s
`petition filed June 17, 2013, an instituted inter partes review of (1) claims
`55-63 and 65-67 under 35 U.S.C. § 102 as anticipated by Mann; and (2)
`claim 64 under 35 U.S.C. § 103 as obvious over Mann and Asai. Dec. 17.
`The Board denied all other asserted grounds as being redundant in light of
`the grounds for which review was instituted for the same claims. Dec. 18.
`Petitioner seeks reconsideration of the decision to deny institution on the
`following grounds:
`1. Claims 55, 59, 60, 62, 63, and 65-67 as anticipated by
`Takahashi;
`2. Claim 61 as obvious over Takahashi, Suwa, and Ulrich; and
`3. Claim 64 as obvious over Takahashi and Asai.
`For the reasons set forth below, the request for rehearing is denied.
`
`II.
`STANDARD OF REVIEW
`When rehearing a decision on institution, the Board will review the
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
`discretion may be determined if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`
`2
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`Case IPR2013-00363
`Patent 7,348,575 B2
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`relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir.
`2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); and
`In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000). The request must
`identify, with specificity, all matters that the moving party believes the
`Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).
`
`III. DISCUSSION
`Petitioner argues that that the Board overlooked the reasons set forth
`in the Petition explaining why the grounds based on Takahashi are not
`redundant in view of the grounds based on Mann. Req. 3. Specifically,
`Takahashi is prior art under 35 U.S.C. § 102(b), whereas Mann is prior art
`under 35 U.S.C. § 102(e). As a result, it is possible that Patent Owner may
`antedate Mann. Petitioner argues that, if Patent Owner antedates Mann, the
`aforementioned non-instituted grounds will not be redundant to the instituted
`ground of anticipation by Mann because, without Mann, no other reference
`will be before the Board on which claims 55 and 59-67 could be found
`unpatentable. Id.
`The Board is charged with securing the just, speedy, and inexpensive
`resolution of every proceeding and has the discretion to deny some grounds
`to ensure that objective is met. 37 C.F.R. §§ 42.1(b), 42.108(b). In our
`decision, we instituted inter partes review based on grounds covering all of
`the challenged claims, going forward on the grounds that the Board
`determined to be the most sufficient substantively. In that regard, the Board
`determined that Mann discloses more clearly the limitations of the
`challenged claims.
`
`3
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`Case IPR2013-00363
`Patent 7,348,575 B2
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`
`For example, Mann is alleged to anticipate claims 55-63 and 65-67,
`whereas Takahashi is alleged to anticipate only claims 55, 59, 60, 62, 63,
`and 65-67. Req. 4-5; see also Pet. 19-38. And none of Takahashi-based
`Grounds 4, 5, or 6 challenge claims 56, 57, and 58. In addition, Mann more
`clearly discloses “a third unit . . . comprising at least two negative lenses,” as
`recited in independent claim 55. Specifically, Mann discloses that “[l]ens
`element E7 is a negative lens . . . lens element E10 is a negative lens.” Ex.
`1110 ¶ 0050 (emphasis added); see also Ex. 1116 (Juergens Decl.) ¶ 98. In
`contrast, Takahashi discloses that L31 and L32, which Petitioner contends
`are the recited “third unit,” are each a “negative meniscus lens.” Ex. 1114
`¶ 0090; see also Juergens Decl. ¶ 137. Similarly, Mann more clearly
`discloses “a fourth unit . . . comprising at least three positive lenses,” as
`recited in claim 55. For Mann, Petitioner identifies lens elements E11-E20
`as the recited “fourth unit.” Mann discloses that “lens element E11 is a
`positive lens, lens element E12 is a negative lens, lens elements E13-E16 are
`positive lenses, lens element E17 is a negative lens, lens elements E18-E20
`are positive lenses.” Ex. 1110 ¶ 0050 (emphasis added). For Takahashi,
`Petitioner identifies lenses L33-L38 (Pet. 35 (citing Ex. 1114, ¶¶ 0090-92,
`Table 2; Ex. 1116, ¶¶ 43, 46, 52, 139), which are described as:
`a biconvex lens L33 having an aspherical convex surface set
`facing toward the wafer, an aperture stop AS, a biconvex lens
`L34 having an aspherical convex surface set facing toward the
`reticle, a positive meniscus lens L35 having a convex lens set
`facing toward the reticle side, a positive meniscus lens L36
`having an aspherical concave surface set facing toward the
`wafer, a positive meniscus lens L37 having a convex lens set
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`4
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`Case IPR2013-00363
`Patent 7,348,575 B2
`
`
`facing toward the reticle and a biconvex lens L38 having an
`aspherical convex surface set facing toward the wafer.
`Ex. 1114, ¶ 0090 (emphasis added). Thus, although Takahashi discloses two
`negative meniscus lenses and three positive meniscus lenses, Mann discloses
`literally “negative lenses” and “positive lenses,” as recited in the claim. As a
`result, Mann discloses more clearly the limitations of claim 55. For the
`reasons discussed above, we determine that Petitioner fails to demonstrate
`that the Board abused its discretion in not instituting inter partes review of
`(1) independent claim 55; (2) independent claims 63, 66, and 67, which
`incorporate claim 55 by reference; and (3) dependent claims 59, 60, 62, and
`65.
`
`
`
`CONCLUSION
`Petitioner’s request for rehearing is denied.
`
`
`
`
`
`5
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`Case IPR2013-00363
`Patent 7,348,575 B2
`
`For PETITIONER:
`
`Marc M. Wefers, Esq.
`Chris C. Bowley, Esq.
`Fish & Richardson, P.C.
`wefers@fr.com
`bowley@fr.com
`
`
`
`For PATENT OWNER:
`
`John S. Kern, Esq.
`Robert C. Mattson, Esq.
`Oblon Spivak
`CPdocketKern@oblon.com
`CPdocketMattson@oblon.com
`
`
`
`6
`
`
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