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 IPR2013-00363
`Patent 7,348,575
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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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 IPR2013-00363
`Patent 7,348,575
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`Case IPR2013-00363
`Attorney Docket No: 24984-0056IP2
`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`INTRODUCTION ......................................................................................... 1
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`ZEISS’S CONSTRUCTION OF “UNIT” IS THE CORRECT
`
`CONSTRUCTION ......................................................................................... 2
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`(a) Applicable Law .............................................................................................. 2
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`(b) Zeiss’s Construction Gives “Unit” its Ordinary Meaning ............................. 3
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`(c) Nikon’s Arguments that Zeiss’s Construction is Overly Broad are Meritless
`
` .................................................................................................................... 4
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`III.
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`NIKON’S CONSTRUCTION IMPROPERLY SEEKS TO IMPORT
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`FEATURES FROM THE SPECIFICATION INTO THE CLAIM .............. 7
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`IV.
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`NIKON’S CHALLENGES TO MR. JUERGENS’ QUALIFICATIONS
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`AND ANALYSIS HAVE NO MERIT .......................................................... 9
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`(a) Mr. Juergens’ Expertise Qualify Him as an Expert in Optical Design ......... 9
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`(b) Mr. Juergens’ Conclusions are Based on Accurate Data, and the Error in
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`the Lens Sequence in Mann is Inconsequential to Mr. Juergens’
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`Conclusions .............................................................................................. 11
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`V.
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`CLAIMS 55-67 ARE INVALID UNDER ANY OF ZEISS’S, THE
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`BOARD’S OR NIKON’S CONSTRUCTIONS .......................................... 13
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`(a) Nikon does not Dispute that Mann Anticipates Claim 55 under Zeiss’s and
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`the Board’s Respective Constructions of “Unit” ..................................... 13
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`(b) Mann Anticipates Claim 55 under Nikon’s Construction of “Numbered
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`Unit” ......................................................................................................... 14
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`(c) Mann Anticipates Dependent Claims 56-63 and 65-67 ............................... 14
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`(d) Dependent Claim 64 is Obvious .................................................................. 14
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`VI.
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`CONCLUSION ............................................................................................ 15
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`LIST OF EXHIBITS
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`ZEISS 1101 U.S. Patent No. 7,348,575 (“the Omura Patent”)
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`ZEISS 1102 U.S. Patent No. 7,309,870 (“the Omura ’870 Patent”)
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`ZEISS 1103
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`ZEISS 1104
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`ZEISS 1105
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`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”)
`ZEISS 1107 Certified English Translation of Japanese Unexamined Patent
`Publication No. JP 2003-128154
`ZEISS 1108 Certified English Translation of Japanese Unexamined Patent
`Publication JP 2003-350647
`ZEISS 1109 Certified English Translation of Japanese Unexamined Patent
`Publication JP 2003-364596
`ZEISS 1110 US Patent Application Publication No.US 2005/0036213
`(“Mann”)
`JP Patent Application Publication No. JP 2003-114387
`
`ZEISS 1106
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`ZEISS 1111
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`ZEISS 1112 Certified English Translation of JP Patent Application Publication
`No. JP 2003-114387 (“Omura ‘387”)
`ZEISS 1113 PCT Patent Publication WO 02/035273 (“Takahashi PCT”)
`
`ZEISS 1114 European Patent Application Publication No. EP 1 336 887 A1
`(“Takahashi”)
`ZEISS 1115 Satori Asai et al., “Resolution Limit for Optical Lithography
`Using Polarized Light Illumination,” Jpn. J. Appl. Phys. Vol. 32,
`pp. 5863-5866 (1993) (“Asai”)
`iii
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`ZEISS 1116 Expert Declaration of Richard C. Juergens
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`ZEISS 1117 Wikipedia, “Optical Power,”
`https://en.wikipedia.org/wiki/Optical_power (downloaded May
`20, 2013)
`ZEISS 1118 Willi Ulrich et al., “The Development of Dioptric Projection
`Lenses for DUV Lithography,” Proc. SPIE Vol. 4832, pp. 158-
`169 (2002) (“Ulrich”)
`ZEISS 1119 Eugene Hecht, Optics (4th ed.), Addison Wesley (2002), pp. 171-
`173.
`ZEISS 1120 Wikipedia, “Optical Axis,”
`https://en.wikipedia.org/wiki/Optical_axis (downloaded May 20,
`2013)
`ZEISS 1121 New World Dictionary of the American Language, Second
`College Edition, p. 1552, Simon and Schuster (1980)
`ZEISS 1122 File History Excerpts from U.S. Serial No. 11/266,288 (“Omura
`Application”)
`ZEISS 1123 US Patent No. 5,825,043 (“Suwa”)
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`ZEISS 1124 Wikipedia, “Refractive Index,”
`http://en.wikipedia.org/wiki/Refractive_index (downloaded May
`20, 2013)
`ZEISS 1125 U.S. Patent No. 4,346,164 (“Tabarelli”)
`
`ZEISS 1127
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`ZEISS 1126 File History Excerpts from U.S. Serial No. 11/513,160 (“Omura
`Continuation Application”)
`J.R. Sheats and B.W. Smith, Microlithography: Science and
`Technology, Marcel Dekker, Inc. (1998), Chapter 1, pp. 1-43.
`ZEISS 1128 Omura Reply 1, Paper No. 200, Interference No. 105,834
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`ZEISS 1129 Curriculum Vitae of Richard C. Juergens
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`ZEISS 1130 CODE V Sequence Data
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`ZEISS 1131 CODE V Sub-routines
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`ZEISS 1132 OPTI 517 Lens Design Fall 2013
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`ZEISS 1133 OPTI 517 Image Quality
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`ZEISS 1134 U.S. Application No. 10/639,780 Mann Application
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`ZEISS 1135 Deposition of Richard Juergen in IPR2013-00363 Zeiss v. Nikon
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`ZEISS 1136 Deposition of Jose Sasian in IPR2013-00362 Zeiss v. Nikon
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`ZEISS 1137 U.S. Application No. 12/379,415 as filed
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`ZEISS 1138 Office Action issued in U.S. Application No. 12/379,415 on
`January 7, 2011
`ZEISS 1139 Amendment under 37 CFR 1.111 filed in U.S. Application No.
`12/379,415 on July 7, 2011
`ZEISS 1140 U.S. Patent No. 3,887,273 (“Griffiths”)
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`ZEISS 1141 U.S. Patent No. 4,867,551 (“Perera”)
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`ZEISS 1142 U.S. Patent No. 5,552,922 (“Margarill”)
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`ZEISS 1143 U.S. Patent No. 7,631,975 (“Takaura”)
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`ZEISS 1144 U.S. Patent No. 8,279,527 (“Lin”)
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`ZEISS 1145 GE Lighting Solutions, LLC v. Agilight, Inc., No. 2013-1267,
`Slip. Op. 5 (Fed. Cir. May 1, 2014)
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`3M Innovative Properties Company v. Avery Dennison Corporation,
`350 F. 3d 1365 (Fed. Cir. 2003) ........................................................................... 3
`
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) ............................................................................ 2
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`GE Lighting Solutions, LLC v. Agilight, Inc., No. 2013-1267, Slip.
`Op. 5 (Fed. Cir. May 1, 2014) .............................................................................. 2
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`Mars Inc. v. H.J. Heinz Co.,
`377 F.3d 1369, 71 USPQ2d 1837 (Fed. Cir. 2004) .............................................. 5
`
`SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc.,
`242 F.3d 1337 (Fed. Cir. 2001) ............................................................................ 2
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`Attorney Docket No: 24984-0056IP2
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`I.
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`INTRODUCTION
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`There is no dispute that under the construction of “unit” advanced by Zeiss,
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`or under the construction of that term adopted by the Board, claims 55-67 of the
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`575 Patent are invalid, with claims 55-63 and 65-67 being anticipated by Mann,
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`and the remaining claim 64 being obvious over Mann and Asai.
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`Nikon instead bases its opposition solely on claim construction, contending
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`that “numbered units” means “a group of optical elements (lenses or mirrors) that
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`cooperate together to perform a specific purpose or common function.” This
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`construction is a serious narrowing departure from the ordinary meaning of the
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`term, and is not warranted by the intrinsic record. Nothing in the specification
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`defines the term in this way. Nor is there a disavowal that would limit the generic
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`term “unit” to such a precise and specific grouping. In short, this dispute turns
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`critically on Nikon’s attempt to read details of the specification into the claims, a
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`practice that the Federal Circuit has repeatedly said is improper.
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`Moreover, it is also immaterial. At deposition, Nikon’s expert, Dr. Sasain,
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`gave testimony showing that, even under Nikon’s erroneous construction, the
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`claims are invalid. The particular collections of lenses in the Mann reference that
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`Zeiss has identified as corresponding to the “first unit,” “second unit,” etc. of claim
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`55 of course “cooperate together to perform a specific purpose or common
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`function.” They are not there for aesthetic reasons. They are there to refract light,
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`and they do so in a cooperative manner. Dr. Sasian conceded this self-evident
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`point, and thus even Nikon’s result-oriented construction does not save the claims
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`from invalidity.
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`II. ZEISS’S CONSTRUCTION OF “UNIT” IS THE CORRECT
`CONSTRUCTION
`(a) Applicable Law
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`Claims are interpreted using “the broadest reasonable construction in light of
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`the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b).
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`There is a “heavy presumption” that a claim term carries its ordinary and
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`customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
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`(Fed. Cir. 2002). “The specification and prosecution history only compel departure
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`from the plan meaning in two instances: lexicography and disavowal.” GE
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`Lighting Solutions, LLC v. Agilight, Inc., No. 2013-1267, Slip. Op. 5 (Fed. Cir.
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`May 1, 2014)(ZEISS 1145). “To act as its own lexicographer, a patentee must
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`‘clearly set forth a definition of the disputed claim term,” and “clearly express an
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`intent to define the term.” Id. 5-6, citing Thorner v. Sony Computer Entm’t Am.
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`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Similarly, disavowal requires that “the
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`specification [or prosecution history] make[] clear that the invention does not
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`include a particular feature.” SciMed Life Sys. Inc. v. Advanced Cardiovascular
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`Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001).
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`(b) Zeiss’s Construction Gives “Unit” its Ordinary Meaning
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`The specification of the 575 Patent does not define a “unit” or a “numbered
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`unit.” Nor does the file history indicate that the applicant acted as its own
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`lexicographer or disavowed scope of either “unit” or “numbered unit”. In short,
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`Nikon has identified nothing in the intrinsic record that would warrant departing
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`from the ordinary—and broad—meaning of the term. Nor is there anything in the
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`intrinsic record to suggest that the term is a “term of art,” carrying with it special
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`significance and meaning to those in the field, an d Nikon’s technical expert, Dr.
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`Sasian, does not so contend. Nor is there any merit to Nikon’s assertion that by
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`preceding the term “unit” with the labels “first,” “second,” etc. that the terms take
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`on a narrower meaning. Those labels are just that—labels. They provide an
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`unambiguous distinction between repeated instances of “unit” in the claims. See,
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`e.g., 3M Innovative Properties Company v. Avery Dennison Corporation, 350 F.
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`3d 1365, 1371 (Fed. Cir. 2003). Zeiss’s construction is therefore appropriately
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`based on the conventional dictionary definition: “a single, distinct part or object.”
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`Pet. 13, citing ZEISS 1121.1 This construction is in no way inconsistent with, or
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`1 Given that the Board’s construction encompasses, and is broader than, Zeiss’s
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`construction, whether a “unit” in the context of the 575 Patent can also include “a
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`determinate quantity adopted as a standard of measurement for other quantities of
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`the same kind” is immaterial to the issue in dispute. However, Zeiss would urge
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`excludes, anything in the specification. In every instance where the 575 Patent
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`identifies a numbered unit, that unit is a single, distinct part of a projection
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`objective. See, e.g., ZEISS 1101 29:39-46, 30:28-31, and 30:58-60, and FIG. 9,
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`where the 575 Patent identifies G11 as a “first unit”, lens L5, mirror M1, mirror
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`M2, mirror M3, and M4 as a “second unit,” G21 as a “third unit,” and a “fourth
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`unit” composed of “lens unit G22, aperture stop AS1, and lens unit G23.
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`Applying Zeiss’s construction, claim 55 covers catadioptric projection
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`optical systems that include four single, distinct parts or objects, each of which has
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`the specific features set forth in the claim.
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`(c) Nikon’s Arguments that Zeiss’s Construction is Overly Broad are
`Meritless
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`Nikon and Dr. Sasian lodge the following critique of Zeiss’s construction:
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`(1) although Zeiss acknowledges that the “units” in claim 55
`correspond to units “consisting of one or more consecutive lenses
`and/or mirrors,” Zeiss’ construction of the first through fourth “units”
`in claim 55 is not limited to optical elements, (2) Zeiss fails to
`acknowledge how the 575 Patent defines the metes and bounds of the
`first through fourth units, and (3) Zeiss implies that the 575 Patent
`uses the terms first through fourth units interchangeably with “lens
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`the Board to adopt its construction to reduce the range of potential issues on
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`appeal.
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`units,” whereas the 575 Patent distinguishes between the first through
`fourth units and lens units.
`Resp. 16-17, citing Ex. 2002 ¶56.
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`None of these points bear scrutiny. With respect to Nikon’s first criticism,
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`nothing in the 575 Patent limits the simple and generic term “unit” to substructures
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`that contain only optical elements—Nikon identifies neither lexicography or
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`disavowal in support of this argument. The claim language itself also belies
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`Nikon’s position, prefacing the description of each claimed “unit” with the classic
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`open-ended term “comprising” (e.g., “a second unit…comprising at least four
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`mirrors”). See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d
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`1837, 1843 (Fed. Cir. 2004) (“comprising,” “containing” and “mixture” “are open-
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`ended.”).
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`As to Nikon’s second criticism, it fails to explain why Zeiss’ construction
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`does not define “the metes and bounds” of the numbered units. Resp. 17-18; Ex.
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`2002 ¶56. The term “unit,” standing alone, is a generic construct that the claim
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`plainly uses in order to provide an unambiguous label for antecedence purposes. If
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`by “metes and bounds” Nikon means to suggest that the sole term “unit” must in
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`and of itself recite the optical characteristics of each unit, that argument ignores
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`that the other words in the claim do just that, reciting location, elements, and/or
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`function for each unit:
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`5
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`NUMBERED
`UNIT
`First Unit
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`Second Unit
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`Third Unit
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`Fourth Unit
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`LOCATION
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`“…in an optical
`path between the
`first surface and
`the second
`surface…”
`“…in an optical
`path between the
`first unit and the
`second surface…”
`“…in an optical
`path between the
`second unit and the
`second surface…”
`“…in an optical
`path between the
`third unit and the
`second…”
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`Case IPR2013-00363
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`ELEMENTS
`FUNCTION
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`None
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`“…at least four
`mirrors;”
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`“…at least two
`negative lenses…”
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`“…at least three
`positive
`lenses…[and] an
`aperture stop…”
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`“…having a
`positive refractive
`power;”
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`“…an intermediate
`image is formed in
`the second unit…”
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`“…having a
`negative refractive
`power;”
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`“…having a
`positive refractive
`power;”
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`If anything, it is Nikon’s construction that fails to offer the requisite level of
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`specificity. While Nikon proposes that “numbered units” means “a group of
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`optical elements (lenses or mirrors) that cooperate together to perform a specific
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`purpose or common function,” suggesting that it only includes lenses or mirrors,
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`when pressed on the “metes and bounds” issue, Dr. Sasian allowed that it could
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`include also things such as aperture stops, and then could not say definitively
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`whether it includes prisms. ZEISS 1136, 18:8-20:12 and 22:13-23:11.
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`As to Nikon’s third criticism, this issue is immaterial to Zeiss’s construction,
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`which in no way turns on whether “units” and “lens units” are used synonymously
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`in the specification. In any event, as a factual matter, the 575 Patent does use the
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`terms first through fourth units interchangeably with “lens units,” where the units
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`are composed entirely of lenses. For example, with reference to FIG. 9, the 575
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`Patent identifies element groups G11 and G21 as both “lens units” and numbered
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`“units.” ZEISS 1101, 29:38-46. Indeed, Dr. Sasian agreed during his deposition
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`that the two terms are used synonymously in the specification. ZEISS 1136 29:10-
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`21.
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`III. NIKON’S CONSTRUCTION IMPROPERLY SEEKS TO IMPORT
`FEATURES FROM THE SPECIFICATION INTO THE CLAIM
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`At its core, Nikon’s claim construction seeks to import the details of the
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`numbered units in projection optical system PL1 into claim 55. For example,
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`Nikon identifies the “common function” of the “third unit” as follows:
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`Readily satisfies Petzval’s condition, adjusts the magnification,
`suppresses aberration, and decreases system length.
`Resp. 6.
`This turns the satisfaction of Petzval’s condition into a requirement, even though
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`the 575 Patent clearly states that it is merely a possible role for the third unit:
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`Since the projection optical system comprises the third unit having the
`negative refracting power, the total length of the catadioptric
`projection optical system can be decreased and the adjustment for
`satisfying the Petzval's condition can be readily performed.
`ZEISS 1101, 12:14-23; emphasis added.
`
`In this regard, Nikon’s construction depends heavily on Dr. Sasian, who
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`repeatedly exhibited a fundamental misunderstanding of principles of claim
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`construction. For example, Dr. Sasian in forming his opinions understood that the
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`“the catadioptric projection optical system” recited in the preamble of claim 55 “is
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`limited to the fields set forth … in the section ‘FIELD OF THE INVENTION’,”
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`namely photolithography, even though photolithography is nowhere mentioned in
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`the claim. ZEISS 1136 17:1-17. In another instance, Dr. Sasian testified that “in
`
`view of the specification,” he understood claim 55 “to be limited to an in-line
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`system with a single axis,” even though those limitations are also absent from the
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`claim. ZEISS 1136 23:12-17.
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`It is further notable that Nikon’s position here on the ostensible narrowness
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`of “unit” directly contradicts the position it took in another application in the same
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`patent family. In particular, Nikon filed U.S. Application No. 12/379,415 (“the
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`415 Application”) claiming benefit of, among other applications, U.S. Application
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`No. 11/882,208, the application that issued as the 575 Patent, and that has the same
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`disclosure as the 575 Patent. ZEISS 1137. The Patent Office initially rejected
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`Nikon’s priority claim on the grounds that “the parent application does not include
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`any lens diameters much less maximum lens diameters of different lens units [as
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`claimed].” ZEISS 1138 5. In response, Nikon relied on FIG. 5, grouping together
`
`sets of consecutive optical elements and designating them as first through fourth
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`“lens units.” In short, Nikon there tacitly took the same position on claim
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`construction that Zeiss takes here.
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`IV. NIKON’S CHALLENGES TO MR. JUERGENS’ QUALIFICATIONS
`AND ANALYSIS HAVE NO MERIT
`
`According to Nikon and Dr. Sasian, Mr. Juergens’ testimony should be
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`given little weight for three reasons: (i) “Mr. Juergens is Not an Expert in
`
`Projection Optical Systems”; (ii) “Mr. Juergens’ Selection of Numbered Units in
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`Mann is Improper;” and (iii) “Mr. Juergens’ Declaration Contains Errors in the
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`Underlying Data Used to Form His Conclusions.” Resp. 25-36. As shown below,
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`these criticisms also lack merit.
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`(a) Mr. Juergens’ Expertise Qualify Him as an Expert in Optical Design
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`Nikon and Dr. Sasian contend that Mr. Juergens is “not qualified as an
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`expert in projection optical systems or, even more generally, the field of
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`microlithography” because “a person of ordinary skill in the art of projection
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`optical systems would need, in addition to education or experience in optical
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`design, at least two years in the lithography optics industry and experience in the
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`specification of projection optical systems.” Resp. 26-27; Ex. 2002 ¶73.
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`This argument overlooks both Mr. Jurgens’ actual expertise, and repeats the
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`same claim construction mistakes chronicled in the preceding section—the claims
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`are not limited to photolithography.2 Claim 55 is directed to “projection optical
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`2 Even if claim 55 were limited to projection optical systems for use in
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`microlithography, that would not disqualify Mr. Jurgens, as there is no need for an
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`systems” in general, and thus encompasses systems used for projection displays,
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`for example.3
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`Not only do Mr. Juergens’ credentials speak for themselves, but Dr. Sasian’s
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`assertion that Mr. Juergens is incompetent to offer testimony in this matter is
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`squarely belied by the fact that, at Dr. Sasian’s invitation, Mr. Juergens has taught
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`Dr. Sasian’s undergraduates a course in lens design for “about 8, 10 years.” ZEISS
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`1136 9:18-23 and 11:7-21; ZEISS 1132; ZEISS 1133. When confronted with this
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`inconsistency, Dr. Sasian was forced to concede that he in fact does consider Mr.
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`Juergens to be an expert in various facets of optical design, such as “using optical
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`expert witness to have particular experience with the specific subject matter. See,
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`CBM2013-00004, Final Written Decision, p. 60, denying Petitioner’s Motion to
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`Exclude (“Under the Federal Rule of Evidence 702, a witness who is qualified as
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`an expert by knowledge, skill, experience, training or education may testify in the
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`form of an opinion. [The petitioner] has not shown that Rule 702 of the Federal
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`Rules of Evidence requires the witness to have particular experience with the
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`specific subject matter of the [challenged] patent, or requires the relevant
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`experience of the witness to have been acquired [at the time of the invention].”).
`
`3 See, e.g., U.S. 3,887,273 (ZEISS 1140), U.S. 4,867,551 (ZEISS 1141), U.S.
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`5,552,992 (ZEISS 1142), U.S. 7,631,975 (ZEISS 1143), and U.S. 8,279,527
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`(ZEISS 1144) for examples of projection optical systems for projection displays.
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`Case IPR2013-00363
`Attorney Docket No: 24984-0056IP2
`design software,” the use of optical design software for understanding “aberrations
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`and the image quality of systems,” and “spherical aberration and aspherics.” ZEISS
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`1136 10:11-20, 13:1-19 and 14:21-15:5. If Mr. Juergens is competent to teach Dr.
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`Sasian’s students on these subjects and more, he is certainly competent to offer
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`testimony in this matter.
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`Nor is it fair for Dr. Sasian to say that Mr. Juergens “struggles with the
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`ability to correctly identify “units” in complex projection systems” as Nikon
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`contends. Resp. 27; Ex. 2002 ¶75. There is and was no such “struggle.” Any
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`ambivalence Mr. Juergens displayed regarding whether to include lens E11 in the
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`third unit in Mann is because the lens groupings E6-E10 and E6-E11 both
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`correspond to single, distinct parts having negative optical power and so could both
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`be identified as the “third unit.” ZEISS 1110 11-13; ZEISS 1130 1-3. That is a
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`function of the claim language Nikon chose to use, nothing more.
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`(b) Mr. Juergens’ Conclusions are Based on Accurate Data, and the Error
`in the Lens Sequence in Mann is Inconsequential to Mr. Juergens’
`Conclusions
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`During Mr. Juergens’ deposition, Nikon’s attorneys identified a discrepancy
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`between the thickness of the one of the surfaces in Table 2 of the published Mann
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`patent application and the thickness of that surface in the CODE V Sequence that
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`Mr. Juergens provided with his Declaration. Ex. 2004 53:7-22. Specifically, the
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`thickness of surface 1, which is the thickness of the first lens, has a value of 38 mm
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`11
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`Case IPR2013-00363
`Attorney Docket No: 24984-0056IP2
`in Table 2 of Mann, but 28 mm in the CODE V Sequence. Compare ZEISS 1110
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`11 with ZEISS 1130 1. While Mr. Juergens stated that “it appears to be an error” in
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`the CODE V Sequence during his deposition, it was later determined that this
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`appeared to be an error introduced by the Patent Office in its publication of the
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`Mann application. Compare ZEISS 1110 11 with ZEISS 1134 27.
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`Dr. Sasian confirmed that the CODE V Sequence was identical to the Mann
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`application as filed with regards to the “characteristics of the first lens.” ZEISS
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`1136 50:3-8. More to the point, he confirmed that this discrepancy was immaterial
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`to the claimed subject matter. Dr. Sasian confirmed that the 10 mm thickness error
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`in this lens has no effect on the sign of the optical power of lens E1 (positive), the
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`sign of the optical power of combined lenses E1 and E2 (positive), or the optical
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`power of lenses E6-E10 (negative) or lenses E11-E20 (positive). ZEISS 1136
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`53:14-55:14. In other words, the claim is anticipated by both the Mann application
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`as filed, and as published.
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`Nikon’s attorneys also identified a second alleged discrepancy at Mr.
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`Juergens’ deposition, this one concerning the thickness of the fourth surface as
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`stated in Table 2 of the published Mann application and Mr. Juergen’s CODE V
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`Sequence. Ex. 2004 53:23-54:18; ZEISS 1110 11; ZEISS 1130 1. However, Dr.
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`Sasian also confirmed this was not an error at all, but rather the inclusion of a
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`“dummy surface” in the CODE V Sequence. ZEISS 1136 55:20-59:12. Dr. Sasian
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`12
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`Case IPR2013-00363
`Attorney Docket No: 24984-0056IP2
`confirmed that this has no effect on ray trace and that there are two lines of data in
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`the CODE V Sequence that “fairly model what is shown as the radius and
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`curvature for Surface 4, Table 2 of Mann.” ZEISS 1136 59:5-12 and 62:5-20.
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`In short, neither of the discrepancies Nikon identified between the CODE V
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`Sequence and Table 2 in Mann constitutes an error in Mr. Juergens’ analysis of
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`Mann. As such, neither undermines Mr. Juergens’ conclusion that Mann
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`anticipates claim 55 and its dependent claims.
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`Furthermore, Zeiss explained these issues to Nikon in a letter dated February
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`4, 2014—more than a month before Dr. Sasian executed his declaration—yet
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`neither Nikon nor Dr. Sasian acknowledged these issues, or let alone addressed
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`them, in their respective submissions, insisting despite the form-over-substance (at
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`best) nature of these issues that “Mr. Juergens’ Declaration contains errors in the
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`underlying data used to form his conclusions and thus should be given little
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`weight.” See ZEISS 1135 (Letter to Nikon’s Attorneys dated Feb. 4, 2014,
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`bringing attention to Errata for Mr. Juergens’ transcript); ZEISS 1136 50:9-51:25.
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`V. CLAIMS 55-67 ARE INVALID UNDER ANY OF ZEISS’S, THE
`BOARD’S OR NIKON’S CONSTRUCTIONS
`(a) Nikon does not Dispute that Mann Anticipates Claim 55 under Zeiss’s
`and the Board’s Respective Constructions of “Unit”
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`As set forth in the Petition and Mr. Juergens’ declaration, Mann discloses
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`every limitation of claim 55 under Zeiss’s construction of “unit.” Pet. 19-30. Nikon
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`13
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`Case IPR2013-00363
`Attorney Docket No: 24984-0056IP2
`does not dispute this conclusion, arguing instead that the claim is not anticipated
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`under the construction it proposes. See Resp. 30.
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`(b) Mann Anticipates Claim 55 under Nikon’s Construction of “Numbered
`Unit”
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`While Nikon’s construction is wrong, it also does not alter the conclusion of
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`invalidity. Dr. Sasian confirmed at deposition that merely having two adjacent
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`lenses, each having optical power not canceled out by the other, would be “an
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`example of two lenses cooperating together to perform a specific purpose,” and
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`thus would be a “unit” under Nikon’s construction. Ex. 2002 ¶¶46, 48; ZEISS 1136
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`23:18-26:10. Clearly this is the case with the first through fourth “units” identified
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`by Mr. Juergens.
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`(c) Mann Anticipates Dependent Claims 56-63 and 65-67
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`Nikon does not challenge Zeiss’s evidence establishing that dependent
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`claims 56-63 and 65-67 are anticipated by Mann, other than by disputing that claim
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`55 is anticipated. Pet. 19-30, 54-55. See Resp. 38.
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`(d) Dependent Claim 64 is Obvious
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`Nikon also does not challenge Zeiss’s evidence establishing that dependent
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`claim 64 is obvious over Mann in combination with Asai, other than by disputing
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`that claim 55 is anticipated. Pet. 54-55. See Resp. 39.
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`Case IPR2013-00363
`Attorney Docket No: 24984-0056IP2
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`VI. CONCLUSION
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`For the foregoing reasons, and those set forth in Zeiss’s previous
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`submissions, Zeiss respectfully requests that the Board issue a final decision
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`cancelling claims 55-67 of the 575 Patent.
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`
`
`
` May 28, 2014
`Date:
`
`
`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (612) 337-2508
`Facsimile: (612) 288-9696
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`Respectfully submitted,
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`/ Chris Bowley, Reg. No. 55,016 /
`
`Chris Bowley
`Reg. No. 55,016
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`Case IPR2013-00363
`Attorney Docket No: 24984-0056IP2
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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 that on
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`May 28, 2014, a complete and entire copy of this Petitioner’s Reply to Patent
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`Owner’s Response, with exhibits, were provided via email to the Patent Owner by
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`serving the correspondence email addresses of record as follows:
`
`John S. Kern
`Robert C. Mattson
`OBLON SPIVAK
`1940 Duke Street
`Alexandria, VA 22314
`
`Email: CPdocketKern@oblon.com
`Email: CPdocketMattson@oblon.com
`
`
`
`
`
`
`
`
`
`
`
`/Lori L. Stewart/
`Lori L. Stewart
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-7787
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