Trials@uspto.gov Paper 33
`571-272-7822 Entered: August 15, 2014
`
`
` 1 RECORD OF ORAL HEARING
` 2 UNITED STATES PATENT AND TRADEMARK OFFICE
` 3 - - - - - -
` 4 BEFORE THE PATENT TRIAL AND APPEAL BOARD
` 5 - - - - - -
` 6 CARL ZEISS SMT GmbH
` 7 Petitioner
` 8
` v.
` 9 NIKON CORPORATION
` 10 Patent Owner
` 11 - - - - - -
` 12 Case IPR2013-00362 and IPR2013-00363
` 13 Patent 7,348,575 B2
` 14
` 15 - - - - - -
` 16
` 17 Oral Hearing Held: July 17, 2014
` 18
` 19 Before: SALLY C. MEDLEY, HOWARD B. BLANKENSHIP,
` 20 MATTHEW R. CLEMENTS (via video conference), Administrative
` 21 Patent Judges.
` 22
`The above-entitled matter came on for hearing on
` 23 Thursday, July 17, 2014 at the U.S. Patent and Trademark
` 24 Office, 600 Dulany Street, Alexandria, Virginia at 1:00 p.m.,
` 25 in Courtroom A.
`
` 1
`
`
`571-272-7822 Entered: August 15, 2014
`
`
` 1 RECORD OF ORAL HEARING
` 2 UNITED STATES PATENT AND TRADEMARK OFFICE
` 3 - - - - - -
` 4 BEFORE THE PATENT TRIAL AND APPEAL BOARD
` 5 - - - - - -
` 6 CARL ZEISS SMT GmbH
` 7 Petitioner
` 8
` v.
` 9 NIKON CORPORATION
` 10 Patent Owner
` 11 - - - - - -
` 12 Case IPR2013-00362 and IPR2013-00363
` 13 Patent 7,348,575 B2
` 14
` 15 - - - - - -
` 16
` 17 Oral Hearing Held: July 17, 2014
` 18
` 19 Before: SALLY C. MEDLEY, HOWARD B. BLANKENSHIP,
` 20 MATTHEW R. CLEMENTS (via video conference), Administrative
` 21 Patent Judges.
` 22
`The above-entitled matter came on for hearing on
` 23 Thursday, July 17, 2014 at the U.S. Patent and Trademark
` 24 Office, 600 Dulany Street, Alexandria, Virginia at 1:00 p.m.,
` 25 in Courtroom A.
`
` 1
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`IPR2013-00362 and IPR2013-00363
`Patent 7,348,575 B2
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` 1 APPEARANCES:
` 2 ON BEHALF OF THE PETITIONER:
` 3 KURT L. GLITZENSTEIN, ESQ.
` 4 MARC M. WEFERS, Ph.D., ESQ.
` 5 Fish & Richardson P.C.
` 6 One Marina Park Drive
` 7 Boston, MA 02210-1878
` 8
` 9
` 10
` 11 ON BEHALF OF THE PATENT OWNER:
` 12 JOHN S. KERN, ESQ.
` 13 ROBERT C. MATTSON, ESQ.
` 14 Oblon Spivak McClelland Maier
` 15 & Neustadt, LLP
` 16 1940 Duke Street
` 17 Alexandria, VA 22314
` 18
` 19
` 20
` 21
` 22
` 23
` 24
` 25
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` 2
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`IPR2013-00362 and IPR2013-00363
`Patent 7,348,575 B2
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` 1 P R O C E E D I N G S
` 2 (1:00 p.m.)
` 3 JUDGE MEDLEY: Good afternoon. This is the
` 4 hearing for IPR 2013-00362 and 00363 between Petitioner, Carl
` 5 Zeiss and Patent Owner, Nikon.
` 6 Both cases involve the U.S. Patent 7,348,575, the
` 7 '575 patent. Per the July 10th order that we sent out, each
` 8 party will have 60 minutes of total time to present arguments
` 9 for the two cases. Because the cases involve the '575 patent
` 10 with somewhat similar issues, Petitioner, you will proceed
` 11 first to present your case with respect to the challenged
` 12 claims and grounds for which the Board instituted trial for
` 13 both cases.
` 14 Thereafter Patent Owner, you will respond to
` 15 Petitioner's presentation for both cases. And then, lastly,
` 16 Petitioner, you may reserve rebuttal time to respond to
` 17 Patent Owner's presentation with respect to both cases.
` 18 At this time we would like the parties to please
` 19 introduce counsel for the Petitioner.
` 20 MR. GLITZENSTEIN: Good afternoon, Your Honors,
` 21 Kurt Glitzenstein of Fish & Richardson for the Petitioner,
` 22 Carl Zeiss.
` 23 MR. WEFERS: Marc Wefers, Fish & Richardson for
` 24 Petitioner, Carl Zeiss.
` 25 JUDGE MEDLEY: And who will be presenting?
`
` 3
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`IPR2013-00362 and IPR2013-00363
`Patent 7,348,575 B2
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` 1 MR. GLITZENSTEIN: Your Honor, I will be.
` 2 JUDGE MEDLEY: Okay. Thank you. And for Patent
` 3 Owner?
` 4 MR. KERN: Good afternoon, Your Honor, John Kern
` 5 presenting for Patent Owner, Nikon Corporation.
` 6 JUDGE MEDLEY: Thank you.
` 7 MR. MATTSON: Good afternoon, Robert Mattson,
` 8 Oblon Spivak for Patent Owner, Nikon Corporation. Mr. Kern
` 9 will be presenting.
` 10 JUDGE MEDLEY: Okay. Thank you.
` 11 Petitioner, you may begin. And would you like to
` 12 reserve rebuttal time?
` 13 MR. GLITZENSTEIN: I would, Your Honor.
` 14 I would like to reserve 25 minutes, please.
` 15 JUDGE MEDLEY: Okay.
` 16 MR. GLITZENSTEIN: May I proceed, Your Honors?
` 17 JUDGE MEDLEY: Yes.
` 18 MR. GLITZENSTEIN: May it please this Court, the
` 19 issue with regard to the '362 IPR where I am going to begin
` 20 this afternoon is an issue of obviousness, and in particular
` 21 the issue of obviousness of combining Terasawa and what we
` 22 have termed the immersion references.
` 23 Now, there are two separate and independent
` 24 reasons why it would have been obvious to modify the Terasawa
` 25 reference to include an immersion fluid between the boundary
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` 4
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`IPR2013-00362 and IPR2013-00363
`Patent 7,348,575 B2
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` 1 lens and the wafer. Those two reasons are to increase the
` 2 depth of focus and also, separately, to increase the
` 3 numerical aperture or NA.
` 4 There was motivation in the prior art to do both
` 5 and the prior art enabled both. This is not an unpredictable
` 6 field. The field of optics is, in fact, highly predictable
` 7 and highly deterministic.
` 8 There was nothing undue about any experimentation
` 9 and none has been shown on this record. There is no
` 10 enablement impediment to combining these references.
` 11 Turning first to the issue of depth of focus, the
` 12 prior art in this case expressly discloses the desirability
` 13 of using immersion to increase depth of focus, including in
` 14 catadioptric systems, which are the types of systems recited
` 15 in the specification claimed in claim 1 of the Omura patent.
` 16 We see that in Nikon's own reference, the Fukami application,
` 17 as well as Switkes, an article.
` 18 Nikon's expert in these IPRs, Dr. Sasian conceded
` 19 that there was, in fact, motivation to modify the prior art
` 20 in order to achieve an increased depth of focus. And, in
` 21 fact, Nikon's position that a person of ordinary skill in the
` 22 art would not have been motivated to use immersion in order
` 23 to increase depth of focus cannot be squared with the
` 24 testimony of its own expert, with the disclosure of its own
` 25 patent application Fukami, and in fact, cannot even be
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`IPR2013-00362 and IPR2013-00363
`Patent 7,348,575 B2
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` 1 squared with the disclosure of the Omura patent itself.
` 2 So the offer a fallback; namely, one of claim
` 3 construction. And, in particular, they state that the simple
` 4 term "boundary lens," which is a structural element that is
` 5 simply found as the last element in the projection optics
` 6 system must, as a required matter of claim construction,
` 7 among other things, increase effective NA in the presence of
` 8 an immersion liquid.
` 9 This is not claim construction. This is a
` 10 result-oriented rewriting of the claim, not anything that's
` 11 driven by the intrinsic record in this case. There is
` 12 nothing that Nikon has pointed to that would show as a matter
` 13 of disclaimer or disavowal or lexicography that the simple
` 14 term "boundary lens" carries with it the required notion of
` 15 increasing effective NA.
` 16 That, we submit, is a tacit recognition of the
` 17 fact that the prior art abundantly and clearly and expressly
` 18 motivates, would have motivated somebody of skill in the art
` 19 that had used immersion to increase depth of focus.
` 20 Now, amongst the references that include this
` 21 expressed disclosure as I noted is one of Nikon's own patent
` 22 applications, prior art in this matter, Fukami. And, Mr.
` 23 Sayers, can I get the Fukami reference? It is Zeiss 1015 up
` 24 on the screen, please. If we can go to the first column --
` 25 I'm sorry, the first page of 1015.
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` 6
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`IPR2013-00362 and IPR2013-00363
`Patent 7,348,575 B2
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` 1 And I am using, to avoid confusion here, there are
` 2 actually various page numbers, Your Honor. I am using
` 3 exhibits and we're using the one we found at the -- with
` 4 Fukami will be the top of the page. I'm sorry, Mr. Sayers,
` 5 if you can go to the next page please.
` 6 I'm sorry, Mr. Sayers, can you blow up for me 32
` 7 through 34.
` 8 My apologies, Your Honor, we had a logistical
` 9 issue with the exhibit.
` 10 So directing the Court to page 1 of Zeiss
` 11 Exhibit 1015, lines 32 to 34, note what Nikon instructs the
` 12 art prior to the relevant date at issue here. They said that
` 13 the depth of focus is as important as the resolution when
` 14 performing an exposure. And they note in the formula at the
` 15 bottom that there actually is an inverse relationship between
` 16 the depth of focus and the numerical aperture.
` 17 So right there on the first page of Fukami we have
` 18 a clear and express motivation in the prior art to use
` 19 immersion in order to increase depth of focus. And, Mr.
` 20 Sayers, can we go to the next page, please.
` 21 In fact, they identify -- and let's blow up here,
` 22 Mr. Sayers, lines 13 through line 20, please.
` 23 They actually -- Fukami actually identifies a
` 24 problem in the field, and that is that there was quite a bit
` 25 of focus on the issue of increasing numerical aperture but
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`IPR2013-00362 and IPR2013-00363
`Patent 7,348,575 B2
`
` 1 that comes at a cost. And the cost is that increasing
` 2 numerical aperture carries with it the effect of decreasing
` 3 depth of focus.
` 4 And what Fukami notes here is he says, actually,
` 5 depth of focus will become too narrow if things continue as
` 6 they are and it could lead to insufficient margins during
` 7 exposure. And, in particular, what the concern here is in
` 8 Fukami is that, you know, while it is important to have high
` 9 resolution in these projection optical systems, so too is it
` 10 important that the image that's being resolved is in focus.
` 11 And Fukami serves as a reminder to people of skill
` 12 in the art that you need to actually worry about both. And
` 13 that is a clear and express motivation in using immersion to
` 14 increase -- to increase depth of focus.
` 15 And there is no question also that Fukami
` 16 expressly contemplates using immersion in the context of both
` 17 dioptric systems, using all lenses; catoptric systems, that
` 18 use all mirrors; and of particular relevance here,
` 19 catadioptric systems.
` 20 Mr. Sayers, let's go to page 20 of Exhibit 1015,
` 21 please, and let's show lines 13 to 23.
` 22 And so right here in Fukami, he states that the
` 23 system that's contemplated here, which is an immersion-based
` 24 system, where there is fluid sitting between the final lens
` 25 element and the wafer can be used with any type of projection
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` 8
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`IPR2013-00362 and IPR2013-00363
`Patent 7,348,575 B2
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` 1 optical design.
` 2 We also cite in our papers Switkes. And Switkes
` 3 also reflects and understands that depth of focus can also be
` 4 enhanced by using immersion between the last lens element and
` 5 the wafer.
` 6 Mr. Sayers, if we can get up Exhibit 1010, please,
` 7 page 459.
` 8 And let's just take a look here at the
` 9 introduction, all the way through to the paragraph right
` 10 below the formula there. All right. That's fine.
` 11 So, again, in the last sentence before the formula
` 12 in the middle of the page, Switkes II expressly contemplates
` 13 that liquid immersion can be used to increase the wafer depth
` 14 of focus, which he clarifies is the tolerable error in
` 15 vertical position of the wafer.
` 16 So if you have some imprecision between the
` 17 projection optics and the wafer, a larger depth of focus will
` 18 render that lack of precision less of consequence, so you can
` 19 still get an image that is within acceptable focus.
` 20 And he too recognizes in that formula that there
` 21 is an inverse relationship between depth of focus and
` 22 numerical aperture. Again, reminding people in the field to,
` 23 to take care to note that depth of focus is also important in
` 24 designing projection optics and that immersion can be used to
` 25 help increase that.
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` 9
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`IPR2013-00362 and IPR2013-00363
`Patent 7,348,575 B2
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` 1 Now, as I mentioned at the outset, on
` 2 cross-examination Nikon's expert on this matter, Dr. Sasian,
` 3 also conceded motivation.
` 4 Mr. Sayers, can you get up Exhibit 1033, please?
` 5 And let's take a look at Dr. Sasian's testimony at page 137,
` 6 line 12 through 16.
` 7 And I asked Dr. Sasian:
` 8 "Question: Okay. So it is true, though, that a
` 9 person of ordinary skill in the art, prior to 2003, would
` 10 recognize that immersion could be used to improve depth of
` 11 focus, correct?
` 12 His answer?
` 13 "Answer: That was well-known."
` 14 So, again, there is no genuine issue here. We
` 15 submit that there was a clear and express motivation, well
` 16 recognized even by Nikon's expert, to use immersion in order
` 17 to increase depth of focus.
` 18 So Nikon's principal argument here on depth of
` 19 focus that people of skill in the art would only have been
` 20 motivated to use immersion to increase NA and, in particular,
` 21 to increase NA over one, can't be reconciled with its own
` 22 expert. It can't be reconciled with Fukami. And, frankly,
` 23 it can't even be reconciled with the disclosure of the '575
` 24 patent that is at issue in this IPR.
` 25 And for that, Mr. Sayers, can we go to the patent,
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` 10
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`IPR2013-00362 and IPR2013-00363
`Patent 7,348,575 B2
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` 1 please, Exhibit 1001? And if you can put up on the screen
` 2 column 18, line 65 through column 19, line 9.
` 3 So right there at the bottom of column 18, 65, all
` 4 the way to the end. All right. And what we see here on the
` 5 left screen with regard to line 65 is Omura, the inventor of
` 6 the subject patent here, actually notes that the embodiment
` 7 at issue here adopts the liquid immersion in order to
` 8 substantially shorten exposure wavelength so as to improve
` 9 the resolution and substantially widen the depth of focus.
` 10 So one of the objectives of the patent at issue in
` 11 the suit was to do both. And this is not an isolated
` 12 reference to this fact. I won't put them up on the screen in
` 13 the interest of time, but also at column 55, lines 44 to 53,
` 14 thereto Omura in his own specification acknowledges that
` 15 increasing depth of focus was, in fact, an objective of the
` 16 invention.
` 17 So too does he say the same at column 16, lines 32
` 18 to 38. So, again, the suggestion, again, the critical
` 19 argument that Nikon makes with regard to the depth of focus
` 20 issue is that there would have been no motivation to do so,
` 21 and yet that was one of the objectives of Omura himself and,
` 22 again, as their own expert conceded was well-known in the
` 23 field.
` 24 So they make an alternative argument or a
` 25 fallback. And that is that there would have been no
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` 11
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`IPR2013-00362 and IPR2013-00363
`Patent 7,348,575 B2
`
` 1 reasonable expectation of success in modifying Terasawa to
` 2 use immersion in order to increase depth of focus.
` 3 Well, that too really can't be squared with the
` 4 record in this case. The record includes Nikon's own
` 5 reference to Fukami. There is nothing in Fukami that hints
` 6 or suggests that there was any impediment at all to use
` 7 immersion to increase depth of focus.
` 8 I mean, that's a striking fact for Nikon to be
` 9 suggesting that it would have been undue experimentation or
` 10 there would have been no reasonable expectation of success of
` 11 modifying the catadioptric system in Terasawa to use
` 12 immersion to increase depth of focus when that is expressly
` 13 the purpose of Fukami.
` 14 Fukami says that can be done and it should be
` 15 done. And it can be done in every type of optical imaging
` 16 system. And it is not just Fukami that stands in
` 17 contradiction to Nikon's position on this issue.
` 18 Dr. Sasian again on cross-examination acknowledged
` 19 that a person of skill in the art was perfectly enabled to
` 20 have used immersion to increase depth of focus.
` 21 Mr. Sayers, let's go back to Dr. Sasian's
` 22 testimony. And let's go to -- that's Exhibit 1033. Let's
` 23 start with page 120, column 11. And let's show that page
` 24 first. Let's go all the way to the end. All right.
` 25 So here is sort of the heart of Nikon's lack of
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`IPR2013-00362 and IPR2013-00363
`Patent 7,348,575 B2
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` 1 enablement argument with regard to depth of focus, which I
` 2 have quoted in my question to Dr. Sasian at the beginning of
` 3 this passage.
` 4 I asked him, I said: You offer the opinion that
` 5 it would not have been obvious to a person of skill in the
` 6 art to immerse Terasawa to increase depth of focus because
` 7 such a modification would actually create significant
` 8 aberration and a thick fluid layer. Is that your opinion?
` 9 His answer was: Yes.
` 10 So I asked him, I said: What do you mean by
` 11 significant aberrations?
` 12 And he said: Well, I mean things that would
` 13 prevent a good edge or sharp edge.
` 14 So I asked him: What types, at the bottom of the
` 15 page what he is referring to?
` 16 Spherical aberration, for example.
` 17 And I asked about others. And let's pick it up at
` 18 the end of the page. Let's get the whole thing blown up.
` 19 All right. And then I asked him about all these various
` 20 aberrations.
` 21 So at line, at line 8 I said: Well, what is the
` 22 most significant one?
` 23 And it is answer was: Well, at least the
` 24 spherical aberration.
` 25 So I said: All right. So that's the most
`
` 13
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`IPR2013-00362 and IPR2013-00363
`Patent 7,348,575 B2
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` 1 significant?
` 2 And his answer was: I think it can be very
` 3 significant.
` 4 So I put the question to him directly.
` 5 "Question: Persons of ordinary skill in the art
` 6 as of 2003 knew how to correct catadioptric systems such as
` 7 the one shown in Terasawa figure 5 to account for spherical
` 8 aberration, right?"
` 9 And the answer was: "Yes." No hesitation, no
` 10 suggestion that that was in any way beyond a level of
` 11 reasonable expectation. That is a clear and direct
` 12 concession that renders these claims invalid for obviousness.
` 13 And, in fact, I asked him more generally. Let's
` 14 go also to Dr. Sasian's testimony at page 178, lines 10 to
` 15 25, please, Mr. Sayers.
` 16 And I asked him, I said: Well, what about the
` 17 tools that were available to people at this time, things like
` 18 Code V, which has been the subject of a number of briefs in
` 19 this case? I said: These were available to persons of
` 20 ordinary skill in the art, right?
` 21 "Answer: Yes."
` 22 I asked him for clarity. "Prior to 2003?
` 23 "Answer: Yes.
` 24 "So those are, in fact, tools that could have been
` 25 used by somebody of ordinary skill in the art prior to 2003
`
` 14
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`IPR2013-00362 and IPR2013-00363
`Patent 7,348,575 B2
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` 1 to evaluate whether immersion fluid could be added to
` 2 Terasawa?
` 3 "Answer: For example."
` 4 Again, more agreement from Dr. Sasian, no
` 5 resistance, no suggestion at all from him that there was
` 6 anything challenging or difficult, let alone a lack of
` 7 reasonable expectation of success with regard to using
` 8 immersion, adding it to a catadioptric system, such as
` 9 Terasawa, to increase depth of focus.
` 10 Now, what about this issue of a thick fluid layer?
` 11 He mentions that as well. Let's go back to Fukami, if I
` 12 could, Mr. Sayers. That's Exhibit 1015. This time I want to
` 13 go to page 15. And let's pick it up at lines 16 through 24,
` 14 please.
` 15 The other thing he said, that Dr. Sasian says
` 16 would have been problematic would have been a thick fluid
` 17 layer. Now, I will pause and note that Dr. Sasian doesn't
` 18 explain why a thick fluid layer would be in any way, would in
` 19 any way frustrate a reasonable expectation of success, but
` 20 what, in fact, did the prior art say?
` 21 Well, in this passage of Fukami, it says at the
` 22 bottom of the paragraph, it says, since the working distance
` 23 that's between the lens and the wafer, worked amount of
` 24 exposure light is very low, even if the transmittance of the
` 25 liquid to exposure light is relatively low. So what does
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`IPR2013-00362 and IPR2013-00363
`Patent 7,348,575 B2
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` 1 that mean?
` 2 That means it is an express teaching from Fukami
` 3 that if you happen to be using an immersion liquid that is
` 4 going to absorb a lot of light, keep the distance short. So
` 5 again, here too with regard to the other aspect of enablement
` 6 that they focus on, we have a teaching in the prior art that
` 7 says be cognizant of it and explains how to deal with it.
` 8 There is nothing experimental involved in this at
` 9 all. It is a direct teaching of how to do it.
` 10 What is the last thing that they identify as an
` 11 alleged sort of impediment on the enablement front with
` 12 regard to depth of focus? Well, they said that thermal and
` 13 mechanical problems would have impeded somebody from
` 14 implementing an immersion-based system in Terasawa.
` 15 So I asked Dr. Sasian about that as well. And
` 16 let's go back to Dr. Sasian's testimony. And let's go to
` 17 page 122, line 18 and all the way through the last part of
` 18 that page, please, Mr. Sayers, 18.
` 19 So, again, here too Dr. Sasian identifies the
` 20 alleged and sort of unexplained really thermal and mechanical
` 21 problems would have required undue experimentation and
` 22 design.
` 23 And I asked him for clarity on what he was talking
` 24 about at the bottom there. But what is interesting -- let's
` 25 go to the next page, Mr. Sayers -- what is interesting, let's
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` 16
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`IPR2013-00362 and IPR2013-00363
`Patent 7,348,575 B2
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` 1 show the next page, lines 1 through 18, please, Mr. Sayers.
` 2 Actually, let's just blow up 12 through 18 in the
` 3 interest of time. So what I asked him, after he went through
` 4 this litany of alleged issues with, with enablement on these
` 5 so-called thermal and mechanical problems, I said: All
` 6 right. Well, where are they addressed in the patent that's
` 7 at issue here? Where are they addressed in the '575 patent?
` 8 And he says: "Well, I don't recall."
` 9 So they can't demand of the prior art, of course,
` 10 a higher level of disclosure than is in the '575 patent
` 11 itself. I mean, that's clear in the case law that we cited,
` 12 the SRI case.
` 13 A prior art reference that provides the same or
` 14 similar level of disclosure as the patent itself can't be
` 15 faulted for being not enabling.
` 16 So what does the '575 patent say? Let's show the
` 17 patent, Mr. Sayers, at -- it is Exhibit 1001. Let's go to
` 18 column 19, lines 26 through 64.
` 19 So this is a long passage here. I wanted to just
` 20 get it up on the screen to highlight a couple of points here.
` 21 What does the patent disclose as being the solution to the
` 22 thermal and mechanical problems that Dr. Sasian identifies?
` 23 Well, a pump for moving liquid into this space, a
` 24 temperature regulator, for regulating the temperature of that
` 25 fluid.
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` 17
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`IPR2013-00362 and IPR2013-00363
`Patent 7,348,575 B2
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` 1 So, for example, so we see at line 32 the liquid
` 2 supplying device one is a device for locally filling the
` 3 space. That's a pump, okay?
` 4 And then at line 36 we see a temperature regulator
` 5 for regulating the temperature of the liquid. And then we
` 6 see in the next paragraph at line 43 there is a liquid
` 7 recovery device, so that's a suction pump of some sort.
` 8 That's all this discloses.
` 9 There is no rocket science or other, you know,
` 10 detailed disclosure in the Omura patent itself about how
` 11 these alleged problems are solved. It talks about two pumps
` 12 and a thermostat, okay?
` 13 And they cannot demand a higher level of
` 14 disclosure from the prior art than what they have in their
` 15 own specification. And, in fact, with Fukami itself, if we
` 16 look at Fukami, just let's put up the first page of the
` 17 Fukami, the original language, Exhibit 1012, and let's just
` 18 blow up that bottom there.
`
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