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 B2
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`PETITIONER’S REQUEST FOR REHEARING UNDER 37 CFR § 42.71(d)
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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 B2
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`PETITIONER’S REQUEST FOR REHEARING UNDER 37 CFR § 42.71(d)
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`IPR2013-00363
`Attorney Docket: 24984-0056IP2
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`I.
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`BACKGROUND AND RELIEF REQUESTED
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`Petitioner, Carl Zeiss SMT GmbH (“Carl Zeiss”), requests rehearing of the
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`Board’s Decision in Paper 7 (hereinafter the “Decision”) declining to institute a
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`trial as to Grounds 4-6 identified at p. 6 of Carl Zeiss’ Petition (Paper 3)
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`(hereinafter the “Petition”) , which requests inter partes review (“IPR”) of claims
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`55-67 of U.S. Patent No. 7,348,575 B2 (“the Omura Patent”). In the Decision, the
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`Board ordered a trial on the following grounds of unpatentability asserted in the
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`Petition:
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`Ground 1: Claims 55-63 and 65-67 as anticipated by US 2005/0036213
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`(“Mann”); and
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`Ground 2: Claim 64 as obvious over Mann in view of Satori Asai et al.,
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`“Resolution Limit for Optical Lithography Using Polarized Light Illumination,”
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`Jpn. J. Appl. Phys. Vol. 32, pp. 5863- 5866 (1993) (“Asai”).
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`The Board denied all other grounds as redundant. Decision at 16-17.
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`Carl Zeiss respectfully requests rehearing of the denial of a trial on the
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`grounds that were not instituted involving WO 02/035273 (“Takahashi”).
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`Specifically, the grounds involving Takahashi are:
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`Ground 4: Claims 55, 59-60, 62-63, and 65-67 as anticipated by Takahashi;
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`Ground 5: Claim 61 as obvious over Takahashi in view of US 5,825,043
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`IPR2013-00363
`Attorney Docket: 24984-0056IP2
`(“Suwa”) and Willi Ulrich et al., “The Development of Dioptric Projection Lenses
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`for DUV Lithography,” Proc. SPIE Vol. 4832, pp. 158-169 (2002) (“Ulrich”); and
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`Ground 6: Claim 64 as obvious over Takahashi in view of Asai.
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`Carl Zeiss respectfully submits that the Board overlooked the express
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`reasons set forth in the Petition explaining why the additional grounds are not
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`redundant. Specifically, at pages 5-6 of the Petition, Carl Zeiss explained how
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`Mann is only prior art under Section 102(e), whereas Takahashi is prior art under
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`Section 102(b). On the other hand, the Petition explained that Mann is anticipatory
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`for certain claims, whereas Takahashi does not anticipate these claims. Because it
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`is possible that the Patent Owner (“Nikon”) could present evidence to antedate
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`Mann and remove it as prior art, but this is not possible for Takahashi, the grounds
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`based on Takahashi are not redundant in view of those based on Mann.
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`Conversely, because Mann anticipates certain claims that Takahashi does not, the
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`grounds based on Mann are not redundant in view of those based onTakahashi.
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`This request is timely and does not require prior authorization from the Board
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`under 37 C.F.R. § 42.71 (d). Granting this request will not require substantially
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`more work or technical understanding by the Board than that for the grounds on
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`which this case has already been instituted.
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`II. LEGAL STANDARDS
`“When rehearing a decision on petition, a panel will review the decision for
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`IPR2013-00363
`Attorney Docket: 24984-0056IP2
`an abuse of discretion.” 37 C.F.R. § 42.71 (c). The Board has held that to avoid a
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`determination that a requested ground of review is redundant of another requested
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`ground, a petitioner must articulate a meaningful distinction in terms of relative
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`strengths and weaknesses with respect to application of the prior art reference
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`disclosures to one or more claim limitations. Scentair Technologies, Inc. v.
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`Prolitec, IPR2013-00180, Paper 18 at 3-4, citing Liberty Mutual Ins. Co. v.
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`Progressive Casualty Inc. Co., CBM2012-0003, Paper 7 at 2-12.
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`III. REASONS FOR THE RELIEF REQUESTED
`The requested grounds relying on Mann are not redundant with the grounds
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`relying on Takahashi. There is a meaningful distinction in the relative strengths of
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`these references because Mann has a later prior art date than Takahashi and is prior
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`art under a different section of 35 U.S.C. § 102 than Takahashi. Specifically, Mann
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`has a filing date of Aug. 12, 2003, making it prior art to the Omura Patent under 35
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`U.S.C. § 102(e). Takahashi published on May 2, 2002, making Takahashi prior art
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`to the Omura Patent under 35 U.S.C. § 102(b). Thus, it is possible that the Nikon
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`could present evidence to antedate Mann and remove it as prior art, but this is not
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`possible for Takahashi.
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`On the other hand, with respect to the claims of the Omura Patent for which
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`Carl Zeiss requests IPR, the disclosure in Mann is better than that in Takahashi.
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`Specifically, the disclosure n Mann is sufficient to anticipate claims 55-63 and 65-
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`IPR2013-00363
`Attorney Docket: 24984-0056IP2
`67, whereas the disclosure in Takahashi is only sufficient to anticipate claims 55,
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`59-60, 62-63, and 65-67. In short, there is a meaningful distinction between Mann
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`and Takahashi because Mann is stronger with respect to what it discloses, but
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`Takahashi is stronger with respect to when it discloses what it discloses.
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`The Petition explained these distinctions when it set forth the various
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`proposed grounds for rejection at pp. 4-6. For example, the Petition said:
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`Mann, Takahashi, and Omura ‘387 are not redundant. Mann has a
`later filing date than Takahashi and Omura ‘387 and is prior art under
`a different section of 35 U.S.C. § 102 than Takahashi and Omura
`‘387. Furthermore, each of these references anticipates a different
`subset of the Challenged Claims relative to the others. For example,
`Mann anticipates certain claims (e.g., claim 61, requiring “a medium
`having a refractive index lager [sic] than 1.1 is interposed in an optical
`path between the lens nearest to the second surface, and the second
`surface”), while Takahashi and Omura ‘387 do not. Furthermore,
`Takahashi provides disclosure relevant to certain claims that is not
`expressly provided by Mann or Omura ‘387 (e.g., “developing the
`exposed photosensitive substrate”). On the other hand, Omura ‘387
`provides additional disclosure that is relevant to certain other
`dependent claims (e.g., requiring a third reflecting mirror that
`“bend[s] the light into a direction toward the optical axis.”) Finally,
`because Zeiss cannot know what rebuttal arguments Nikon will make,
`we respectfully submit that using three primary references is not
`contrary to securing “the just, speedy, and inexpensive resolution” of
`this proceeding required by 37 C.F.R. § 42.1(b).
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`IPR2013-00363
`Attorney Docket: 24984-0056IP2
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`(Petition at p. 4, l. 16, p. 5, l. 11.)
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`The Petition also emphasized the distinctions between Mann and Takahashi when
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`it summarized the different proposed grounds for rejection in the Table on p. 6 of
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`the Petition. Specifically, this Table expressly identified Mann as being
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`anticipatory for claims 55-63 and 65-67 under Section 102(e) (Proposed Ground
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`1), and Takahashi as being anticipatory for only claims 55, 59-60, 62-63, and 65-
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`67, but under Section 102(b) (Proposed Ground 4).
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`Carl Zeiss seeks relief because it believes the Board may have
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`misapprehended or overlooked potential prejudice to Carl Zeiss. Unless the Board
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`authorizes at least some of the denied grounds in this proceeding, Carl Zeiss will
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`be effectively foreclosed from relying on references deemed redundant in the event
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`that Nikon establishes an invention date that removes Mann as prior art with
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`respect to the present claims. While Nikon’s alleged invention date has not been
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`established, in the event Nikon does establish an invention date that pre-dates
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`Mann, Carl Zeiss should be allowed to rely upon at least Takahashi as a non-
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`cumulative primary reference as set forth in Proposed Grounds 4-6.
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`Carl Zeiss submits that this relief is not unduly burdensome on the Board,
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`and is justified by this potential prejudice against Carl Zeiss. For example, as
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`explained in the cited section from the Petition above, the Petition also set forth
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`reasons why Proposed Ground 7-10 involving JP 2003-114387 (“Omura ‘387”)
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`IPR2013-00363
`Attorney Docket: 24984-0056IP2
`were not redundant over the Proposed Grounds based on Mann or the Proposed
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`Grounds based on Takahashi. However, Carl Zeiss is specifically limiting its
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`requested relief here to only adding Proposed Grounds 4-6 based on Takahashi,
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`and not adding Proposed Grounds 7-10 based on Omura ‘387. Carl Zeiss also
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`respectfully submits that the additional work and technical understanding required
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`by the Board to add the Proposed Grounds 4-6 based on Takahashi is only
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`incremental in view of the grounds based on Mann for which trial has already been
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`instituted, and is justified by the potential prejudice against Carl Zeiss in the event
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`the Patent Owner comes forward with invention evidence to antedate Mann.
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`IPR2013-00363
`Attorney Docket: 24984-0056IP2
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`IV. CONCLUSION
`For at least the foregoing reasons, Carl Zeiss requests that the Board
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`reconsider its decision with regard to the following Grounds of unpatentability:
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`Ground 4: Claims 55, 59-60, 62-63, and 65-67 as anticipated by Takahashi;
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`Ground 5: Claim 61 as obvious over Takahashi in view of Suwa and
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`Ulrich; and
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`Ground 6: Claim 64 as obvious over Takahashi in view of Asai.
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`The Commissioner is hereby authorized to charge any fees due in connection
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`with this filing, or credit any overpayment, to Deposit Account No. 06-1050.
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`Respectfully submitted,
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`/Marc M. Wefers Reg. No. 56,842/
`Marc Wefers, Reg. No. 56,842
`Chris C. Bowley, Reg. No. 55,016
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
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`Attorneys for Petitioner
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`IPR2013-00363
`Attorney Docket: 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
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`that on December 27, 2013, a complete and entire copy of this Petitioner’s Request
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`for Rehearing under 37 CFR § 42.71(d) was provided via email to the Patent
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`Owner by serving the correspondence email addresses of record as follows:
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`John S. Kern
`Robert C. Mattson
`Oblon Spivak
`1940 Duke Street
`Alexandria, VA 22314
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`Email: CPdocketKern@oblon.com
`Email: CPdocketMattson@oblon.com
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`/Edward G. Faeth/
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`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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