IPR2015-01277
`U.S. Patent No. 8,309,943
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ASML NETHERLANDS B.V., EXCELITAS TECHNOLOGIES CORP., AND
`QIOPTIQ PHOTONICS GMBH & CO. KG,
`Petitioners
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`v.
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`ENERGETIQ TECHNOLOGY, INC.,
`Patent Owner
`_____________
`
`Cases IPR2015-1277
`U.S. Patent No. 8,309,943
`_____________
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`PATENT OWNER’S RESPONSE
`UNDER 37 C.F.R. § 42.120
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`IPR2015-01277
`U.S. Patent No. 8,309,943
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`I. 
`II. 
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`C. 
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`V. 
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`TABLE OF CONTENTS
`INTRODUCTION ......................................................................................... 1 
`STATE OF THE ART ................................................................................... 2 
`A.  Arc Lamp Technology ........................................................................ 2 
`B. 
`Energetiq’s Patented Laser Driven Light Source ............................ 3 
`III.  CLAIM INTERPRETATION ...................................................................... 4 
`A. 
`“Light source” ...................................................................................... 5 
`B. 
`“Blocker” .............................................................................................. 7 
`IV.  THE DEFINITION OF AN ORDINARY ARTISAN IN THE FIELD .. 13 
`A.  Active Workers in the Field and the Inventor ................................ 14 
`Problems in the Art, Prior Art Solutions, Rapidity with
`B. 
`Which Innovations are Made, and Sophistication of the
`Technology ......................................................................................... 14 
`Petitioners Provides No Factual Support for their Definition
`and Do Not Rely on any of the Relevant Factors ........................... 15 
`THE CHALLENGED CLAIMS WOULD NOT HAVE BEEN
`OBVIOUS OVER GÄRTNER OR OVER THE COMBINATION OF
`GÄRTNER AND IKEUCHI ....................................................................... 16 
`VI.  GROUND 1: THE CHALLENGED CLAIMS WOULD NOT HAVE
`BEEN OBVIOUSNESS UNDER § 103 OVER GÄRTNER .................... 16 
`A.  Overview of Gärtner ......................................................................... 17 
`B.  Gärtner Does Not Disclose or Render Obvious the Claimed
`“Blocker” ............................................................................................ 17 
`Elements cited by Petitioners are not blockers because they
`1. 
`are on the interior of the chamber ........................................ 18 
`a. 
`Figure 1 of Gärtner does not disclose the claimed
`blocker ........................................................................... 18 
`Figure 3 of Gärtner does not disclose the claimed
`blocker ........................................................................... 20 
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`b. 
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`IPR2015-01277
`U.S. Patent No. 8,309,943
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`c. 
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`Figure 4 of Gärtner does not disclose the claimed
`blocker ........................................................................... 21 
`VII.  GROUND 2: THE CHALLENGED CLAIMS WOULD NOT HAVE
`BEEN OBVIOUSNESS UNDER § 103 OVER GÄRTNER AND
`IKEUCHI ...................................................................................................... 23 
`A.  Overview of Ikeuchi .......................................................................... 23 
`The Modification Proposed by Petitioners Would Have
`B. 
`Rendered Gärtner’s System Inoperable for its Intended
`Purpose ............................................................................................... 24 
`Petitioners Fail To Demonstrate Why An Ordinary Artisan
`Would Have Combined Gärtner with Ikeuchi ............................... 29 
`Petitioners do not demonstrate why no one modified
`1. 
`Gärtner to add a blocker, despite their long availability at
`least as early as Gärtner ......................................................... 29 
`Suitable blockers existed long before the ’943 priority
`a. 
`date ................................................................................. 29 
`The years-long availability of blockers before the
`invention, coupled with the teachings away from the
`use of such, shows that the invention was not obvious
`when made ..................................................................... 30 
`Petitioners fail to demonstrate that an ordinary artisan
`would have been motivated to modify Gärtner and Ikeuchi31 
`VIII.  CONCLUSION ............................................................................................ 32 
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`C. 
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`b. 
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`2. 
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`IPR2015-01277
`U.S. Patent No. 8,309,943
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`I.
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`INTRODUCTION
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`This case is about a light source that is so much brighter than what preceded
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`it, that it has essentially replaced the arc lamps previously used in semiconductor
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`wafer inspection, lithography, and metrology tools.
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`The challenged claims are directed to a light source comprising: a chamber;
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`an ignition source for ionizing a medium within the chamber; a laser for providing
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`energy to the ionized medium within the chamber to produce a light; and a blocker
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`suspended along a path the energy travels and blocking the energy provided to the
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`ionized medium that is not absorbed by the ionized medium.
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`Petitioners allege that the challenged claims are rendered obvious based on
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`an incomplete system described in a 20 year old patent application (Gärtner).
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`However, Gärtner fails to include or render obvious elements of the challenged
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`claims, namely the claimed blocker, which, properly construed, must be outside the
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`chamber.
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`Energetiq did not file a preliminary response in this proceeding. Because
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`Petitioners have not met their burden of proof, the claims must be confirmed.1
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` 1
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` This response is supported by the Declaration of Dr. Donald K. Smith.
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`IPR2015-01277
`U.S. Patent No. 8,309,943
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`STATE OF THE ART
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`A. Arc Lamp Technology
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`II.
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`For at least a decade prior to the invention, the semiconductor industry used
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`xenon or mercury arc lamps to produce a light for use in wafer inspection and
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`metrology systems. (See Smith Declaration at ¶ 8 (Ex. 2016); ’943 patent (Ex.
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`1001), 1:31-33 (“The state of the art in, for example, wafer inspection systems
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`involves the use of xenon or mercury arc lamps to produce light.”).)
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`Arc lamps use an anode and cathode to provide an electrical discharge to a
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`gas within the lamp that excites the gas, causing it to emit light. (See ’943 patent
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`(Ex. 1001), 1:20-35.) However, they suffer from a number of shortcomings that
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`constrain the accuracy and efficiency of the equipment that uses them. These
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`problems include instability of the arc, undesirable time to failure, and limits on
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`how bright such sources can get (the spectral brightness of arc lamps is limited by
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`the maximum current density—if too high, it would melt the arc lamps’
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`electrodes). (See, e.g., ’943 patent (Ex. 1001), 1:38-47; Smith Decl. at ¶ 8 (Ex.
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`2016).)
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`Over time, the industry demanded improvements in the brightness level of
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`light sources beyond that which could be met by traditional xenon and mercury arc
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`lamps (ordinarily in the range of about 1 to 9 mW/mm2-sr-nm). (Smith Decl. at
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`U.S. Patent No. 8,309,943
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`¶ 8-9 (Ex. 2016).) For instance, in 2005, Energetiq was approached by an industry
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`leader to see whether Energetiq could use a plasma to develop a high brightness
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`light source. (Smith Decl. at ¶ 10 (Ex. 2016).) The industry required light that was
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`at least many times higher brightness than that of existing arc lamps. (Smith Decl.
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`at ¶ 10 (Ex. 2016).) Petitioner ASML agrees that “[s]ignificant…brightness
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`improvements” are necessary over arc lamps. (U.S. Pub. No. US 2013/0329204
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`A1 at ¶ 0008 (Ex. 2009).)
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`B.
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`Energetiq’s Patented Laser Driven Light Source
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`To satisfy the industry’s need for a higher brightness light source, Energetiq
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`developed a laser-driven light source that uses fundamentally different technology
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`and physics principles than arc lamps.
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`Energetiq’s invention is directed to a light source and related methods
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`having a chamber containing a gas medium to be ionized by an ignition source; a
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`laser to provide laser energy to the ionized medium to produce a light; and a
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`blocker outside the chamber, which blocks laser energy that passes through the
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`chamber and the ionized medium without being absorbed to produce the light.
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`Energetiq filed U.S. Application No. 13/099,823 on May 3, 2011, which
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`issued as U.S. Pat. No. 8,309,943 (the ’943 patent), entitled “Laser-Driven Light
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`Source,” on November 13, 2012. The ’943 patent is a continuation-in-part of U.S.
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`IPR2015-01277
`U.S. Patent No. 8,309,943
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`Pat. App. No. 12/166,918, filed on July 2, 2008, now U.S. Pat. No. 7,989,786;
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`which is a continuation-in-part of U.S. Pat. App. No. 11/695,348, filed on April 2,
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`2007, now U.S. Pat. No. 7,786,455; which is a continuation-in-part of U.S. Pat.
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`App. No. 11/395,523, filed on March 31, 2006, now U.S. Pat. No. 7,435,982
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`III. CLAIM INTERPRETATION
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`In inter partes review, claims are given their broadest reasonable
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`interpretation consistent with the patent specification. 37 C.F.R. § 42.100(b); In re
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`Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1276 (Fed. Cir. 2015), cert granted, 84
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`U.S.L.W. 3562 (U.S. Jan. 15, 2016) (No. 15-446). Within this framework, terms
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`generally are given their ordinary and customary meaning. See In re Translogic
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`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The relevant consideration in
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`claim construction is the meaning that would be assigned a claim term by an
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`ordinary artisan at the time of the invention. Phillips v. AWH Corp., 415 F.3d
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`1303, 1313 (Fed. Cir. 2005) (en banc). “Even under the broadest reasonable
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`interpretation, the Board’s construction ‘cannot be divorced from the specification
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`and the record evidence.’” See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292,
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`1298 (Fed. Cir. 2015) (citation omitted).
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`IPR2015-01277
`U.S. Patent No. 8,309,943
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`A.
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`“Light source”
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`Illustrative independent claim 1 recites the term “light source.” In its
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`Institution Decision, the Board adopted the following construction which was
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`proposed by Petitioners:
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`Claim Term
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`“light source”
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`Board’s Construction on Institution
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`A source of electromagnetic radiation in the
`extreme ultraviolet (10 nm to 100 nm),
`vacuum ultraviolet (100 nm to 200 nm),
`ultraviolet (200 nm to 400 nm), visible (400
`to 700 nm), near-infrared (700 nm to 1,000
`nm (1 μm)), middle infrared (1 μm to 10 μm),
`or far infrared (10 μm to 1000 μm) regions of
`the spectrum.
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`(Institution Decision at 6.) While Energetiq asserts that the term “light source”
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`should more properly be construed to mean “a source of electromagnetic energy,”
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`Energetiq’s positions on the challenged claims do not turn on the meaning of the
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`term “light source,” and
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`the adopted construction
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`is applied where
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`appropriate. However, Petitioners’ proposed construction (adopted by the Board in
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`its Institution Decision) is inappropriate because the specific wavelength ranges
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`listed above, for the different regions of the spectrum, do not comport with the
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`broadest reasonable interpretation.
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`IPR2015-01277
`U.S. Patent No. 8,309,943
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`As an initial matter, in parallel proceedings where the Board also construed
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`the term “light source,” e.g. IPR2015-01362, the Board already rejected
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`Petitioners’ specific wavelength ranges. IPR2015-01362, Paper No. 12 at 6
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`(PTAB Nov. 30, 2015) (“a source of electromagnetic radiation in the ultraviolet
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`(“UV”), extreme UV, vacuum UV, visible, near infrared, middle infrared, or far
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`infrared regions of the spectrum, having wavelengths within the range of 10 nm to
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`1,000 μm”).)
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`In addition, the proposed wavelength ranges conflict with explicit
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`wavelength disclosures in the ‘943 patent. (Compare IPR ’1277 Petition at 7
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`(defining ultraviolet as “200 nm to 400 nm”), with ’943 patent at 17:8-11 (Ex.
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`1001) (“Ultraviolet light is electromagnetic energy with a wavelength shorter than
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`that of visible light, for instance between about 50 nm and 400 nm”).)
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`Further, trying to limit the term to specific wavelength ranges, Petitioners’
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`expert in his declaration, cited to a textbook which he contends establishes the
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`“ordinary and customary” accepted wavelengths of various ranges of
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`electromagnetic radiation. (Decl. of J. Gary Eden at ¶ 32 (Ex. 1006).) But, that
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`same expert (before he was retained here) published papers describing the
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`wavelength ranges differently than the supposed “ordinary and customary”
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`definition he cites here. Compare IPR ’1300 Petition at 7-8, with Eden Dep. Ex. 5
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`IPR2015-01277
`U.S. Patent No. 8,309,943
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`(Knecht et al., “Optical pumping of the XeF(C-+A) and iodine 1.315-μm lasers by
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`a compact surface discharge system,” Optical Engineering, Vol. 42, No. 12 (2003))
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`(Ex. 2021); Tr. 80:21-81:7 (Ex. 2006) (“Q: . . . In there in the abstract you write,
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`“A near-infrared 1.315”; is that correct?” A: That’s what it says. That’s
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`correct. Q: So in your opinion would near-infrared include -- strike that. In your
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`opinion would near-infrared be above 1,000? A: Yes. I think it’s been a long time
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`ago, but my recollection is that the definition that’s offered there is slightly longer
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`than the limit that I’m proposing in the [Declaration].”). (Smith Decl. at ¶ 65 (Ex.
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`2016).)
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`“Blocker”
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`B.
`In its Institution Decision, without a proposed construction by Petitioners,
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`the Board adopted the following construction:
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`Claim Term
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`“a blocker”
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`Board’s Construction on Institution
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`An element that deflects or absorbs energy.
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`(Institution Decision at 6.) The Board’s construction is incomplete because the
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`blocker should be construed to be “outside of the chamber.” (Smith Decl. at ¶ 66
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`(Ex. 2016).)
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`IPR2015-01277
`U.S. Patent No. 8,309,943
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`Accordingly, an ordinary artisan, with the ’943 patent specification in mind,
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`would know that the term refers to:
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`Claim Term
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`“a blocker”
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`Energetiq’s Proposed Construction
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`an element outside of the chamber that
`deflects or absorbs energy
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`(Id.) Every example of a blocker is described to be outside of the chamber. For
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`example, as depicted below in Fig. 15A , the light source includes a chamber 1528
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`(green), a laser 1524 (purple) for providing energy to an ionized medium within
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`the chamber 1528 to produce a high brightness light, and a blocker 1550 (red)
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`outside of the chamber 1528 that deflects or absorbs energy (blue). (’943 patent,
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`28:14-30, 58-67; 29:1-9; claim 1 (Ex. 1001).)
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`IPR2015-01277
`U.S. Patent No. 8,309,943
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`second side
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`’943 Patent, Fig. 15A, Annotated
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`Further, the specification describes the location of the blocker 1528 as being
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`“suspended on a second side 1596 of the chamber 1528.” (’943 patent, 28:49-51
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`(Ex. 1001) (italics added)) The “second side” refers to the area adjacent to the
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`chamber 1528—not a region within the chamber 1528. The blocker 1550 is also
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`coupled to an arm 1555 and suspended in the housing 1510, which is a different
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`chamber 1522 (i.e., not the chamber 1528 in which the medium to be ionized is
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`contained) (’943 patent, 27:67-28:4; 28:47-54; 29:10-11 (Ex. 1001).)
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`IPR2015-01277
`U.S. Patent No. 8,309,943
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`The ’943 patent specification also describes that the blocker 1550 can be
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`located at another position outside of the chamber 1528 – on a portion of the
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`chamber 1528 – in the form of a coating. (’943 patent, 29:36-37: “In some
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`embodiments, the blocker 1550 is a coating on a portion of the chamber 1528.”
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`(Ex. 1001).) An ordinary artisan would understand that the term “on” denotes that
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`the blocker is outside the chamber 1528 rather than inside of or within a wall of the
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`chamber 1528. See Webster’s Third New Int’l Dict. of the English Language, 722,
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`Unabridged, “on,” 1574 (2002) (Ex. 2084) (on, “used as a function word to
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`indicate a position over and in contact with that which supports it from beneath”);
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`The American Heritage Dictionary of the English Language 1228 (4th ed. 2006)
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`(on, “Used to indicate position above and supported by or in contact with.”) (Ex.
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`2085).); (Smith Decl. at ¶ 69 (Ex. 2016).) An example of this position is illustrated
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`below in an annotated version Figure 15A of the ‘943 patent.
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`IPR2015-01277
`U.S. Patent No. 8,309,943
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`blocker coating on a
`portion of the chamber
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`chamber (1528)
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`’943 Patent, Fig. 15A, Annotated
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`The ’943 patent also describes the blocker 1550 as being on the optical
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`element 1520 through which light can exit the housing 1510 – also outside of the
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`chamber 1528. (’943 patent, 28:1-4; 29:37-39: “In some embodiments, the blocker
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`is a coating on the optical element 1520 at the opening 1580.” (Ex. 1001).) As
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`illustrated below, this location on the optical element 1520 is also outside the
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`chamber.
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`IPR2015-01277
`U.S. Patent No. 8,309,943
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`chamber (1528)
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`blocker coating
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`’943 Patent, Fig. 15A, Annotated
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`Further, the blocker being positioned outside of the chamber is consistent
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`with typical design considerations for such light sources. An ordinary artisan
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`would have understood that placing the laser beam blocker inside the gas light bulb
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`would likely have led to degradation of the blocker itself due to the high
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`temperatures associated with the plasma itself. (Smith Decl. at ¶ 71 (Ex. 2016).)
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`In summary, Energetiq submits that “a blocker” should be construed to mean
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`“an element outside of the chamber that deflects or absorbs energy.”
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`IPR2015-01277
`U.S. Patent No. 8,309,943
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`IV. THE DEFINITION OF AN ORDINARY ARTISAN IN THE FIELD
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`Here, the level of ordinary skill is a master of science degree in physics,
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`electrical engineering or an equivalent field, and 4 years of work or research
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`experience in plasmas and a basic understanding of lasers; or a Ph.D. degree in
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`physics, electrical engineering or an equivalent field, and 2 years of work or
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`research experience in plasmas and a basic understanding of lasers. (Smith Decl.
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`at ¶ 13 (Ex. 2016).)
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`The main difference between Energetiq’s definition and Petitioners’
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`(adopted in the Institution Decision) is that Petitioners’ definition requires
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`expertise in lasers—knowledge that the active workers in the field did not have.2
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`Not surprisingly, Petitioners provide no factual support. To the contrary,
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`Energetiq’s definition is fully supported, taking into account the experience of
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`active workers in the field, and further informed by other pertinent factors that
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`determine the level of skill of an ordinary artisan (see Daiichi Sankyo Co., Ltd. v.
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` Petitioners proposed definition is “a Ph.D. in physics, electrical engineering, or an
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`equivalent field, and 2–4 years of work experience with lasers and plasma, or a
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`master’s degree in physics, electrical engineering, or an equivalent field, and 4–5
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` 2
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`years of work experience with lasers and plasma.
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`U.S. Patent No. 8,309,943
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`Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).)
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`A. Active Workers in the Field and the Inventor
`Energetiq’s R&D staff at the time of the invention typifies the educational
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`level of the active workers in the field. (Smith Decl. at ¶ 15 (Ex. 2016).) At the
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`time of the invention, when they were hired, 4 out of 7 individuals in Energetiq’s
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`R&D staff had a basic understanding of lasers, which is consistent in scope with
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`Energetiq’s proposed definition—the
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`rest had no experience
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`in
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`lasers.
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`Importantly, none had the lasers expertise Petitioners propose. (Id.) A definition
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`that ignores the active works in the field, in favor of one that is divorced from all
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`facts, is improper.
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`B. Problems in the Art, Prior Art Solutions, Rapidity with Which
`Innovations are Made, and Sophistication of the Technology
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`The problems encountered in the art included the need for a high brightness
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`light sources for applications such as semiconductor manufacturing. (See ’943
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`patent, at 1:38-60. (Ex. 1001).) Prior art solutions used by ordinary artisans
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`consisted of arc lamps which used electrodes to excite gas in a chamber and
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`produce light – they did not use lasers. (Smith Decl. at ¶ 16 (Ex. 2016).) Indeed,
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`Energetiq’s invention enabled the sale of the first commercial laser driven light
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`source—a market that did not exist prior to the invention. (Id.) Innovations had
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`been slow and incremental, consisting of improvements to existing arc lamps. (Id.)
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`IPR2015-01277
`U.S. Patent No. 8,309,943
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`Thus, requiring laser expertise—as proposed by Petitioners—is incorrect and
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`unsupported. (Id.)
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`C. Petitioners Provides No Factual Support for their Definition and Do
`Not Rely on any of the Relevant Factors
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`Petitioners’ proposed definition relies solely on their expert’s equally
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`conclusory statement. (Petition at 3.) Indeed, when Petitioners’ expert was
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`questioned as to how he arrived at his definition, Petitioners’ expert acknowledged
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`a failure to consider any of the pertinent factors and was incapable of providing
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`specific factual support. (Eden Tr. 191:23-192:6 (“Q: Can you explain for me how
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`you came to this definition? A: Basically, it’s just based on almost 40 years of
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`working in the field, Ms. Reed. I tried to capture in the definition of one skilled in
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`the art the credentials, if you will, the training, that one would most likely find in
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`someone skilled in the art.”) (Ex. 2006).) In fact, Petitioners’ expert conceded he
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`failed to consider the knowledge of active workers in the field, instead improperly
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`focusing on “those who have made major contributions” in the field of lasers,
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`naming as models of those “of ordinary skill,” experts such as Dr. William Silfvast
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`and Dr. Howard Milchberg – that is, those who possess knowledge well beyond a
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`person having ordinary skill in the art. (Id. at 192:11-193:19 (emphasis added).)
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`Indeed, the entirety of Petitioners’ expert declaration is suspect, given that
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`he improperly applied the knowledge and skill of experts in lasers in deciding
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`IPR2015-01277
`U.S. Patent No. 8,309,943
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`obviousness, rather than the knowledge that would be possessed by one having
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`ordinary skill in the art, despite the words he parroted from Petitioners’ brief.
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`V. THE CHALLENGED CLAIMS WOULD NOT HAVE BEEN
`OBVIOUS OVER GÄRTNER OR OVER THE COMBINATION OF
`GÄRTNER AND IKEUCHI
`The Board instituted inter partes review on two obviousness grounds, as
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`provided below:
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`Claims
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`1, 15, and 18
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`1, 15, and 18
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`References
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`Gärtner
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`Gärtner in view of Ikeuchi
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`VI. GROUND 1: THE CHALLENGED CLAIMS WOULD NOT HAVE
`BEEN OBVIOUSNESS UNDER § 103 OVER GÄRTNER
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`Now that trial has been instituted, to prove that the challenged claims are
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`obvious, Petitioners must demonstrate by a preponderance of the evidence that an
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`ordinary artisan would have been motivated to combine the embodiments of
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`Gärtner in a way that meets all limitations of every challenged claim.
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`35 U.S.C. § 316(e). Petitioners’ arguments and evidence are both factually
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`incorrect and legally insufficient.
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`IPR2015-01277
`U.S. Patent No. 8,309,943
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`A. Overview of Gärtner
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`Gärtner is a 1985 French patent application that describes an incomplete
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`system which appears to relate to a radiation source for optical devices. (Gärtner at
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`1:1-5 (Ex. 1003); Smith Decl. at ¶ 17 (Ex. 2016).) As far as can be determined,
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`Gärtner discloses technology that was never developed into a commercial product.
`
`(Smith Decl. at ¶ 18 (Ex. 2016).) Gärtner describes using a CO2 laser to try to
`
`generate a plasma discharge. (Gärtner at 5 (Ex. 1003); Smith Decl. at ¶ 19 (Ex.
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`2016).) Indeed, Gärtner is so far removed from mainstream commercial light
`
`source research and development that it had never been cited by the Patent Office
`
`before Petitioners identified it to Energetiq; yet, it has been overcome in 2
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`subsequent patent proceedings. (Smith Decl. at ¶ 18 (Ex. 2016).)
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`B. Gärtner Does Not Disclose or Render Obvious the Claimed
`“Blocker”
`
`Gärtner cannot render the claims obvious because Gärtner does not disclose,
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`even under the broadest reasonable interpretation, the claimed blocker. (Smith
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`Decl. at ¶ 73 (Ex. 2016).) As discussed above, the term “a blocker” in the context
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`of the ’943 patent means “an element outside of the chamber that deflects or
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`absorbs energy.” (Smith Decl. at ¶ 73 (Ex. 2016).) None of the embodiments in
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`Gärtner, alone or in combination, disclose a blocker as claimed in the ’943 patent.
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`(Smith Decl. at ¶ 73 (Ex. 2016).)
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`1.
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`Elements cited by Petitioners are not blockers because they
`are on the interior of the chamber
`a.
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`Figure 1 of Gärtner does not disclose the claimed
`blocker
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`
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`Gärtner purports to include a radiation source having a chamber 1 containing
`
`a discharge medium 2. (Gärtner at 4:31-5:9; Fig. 1 (Ex. 1003).) Gärtner describes
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`directing radiation from a CO2 laser 9 into the chamber 1 to try to generate an
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`absorbent plasma 14. (Id.) A concave mirror 12 is provided to focus the radiation
`
`from the laser 9 and generate a plasma discharge in the chamber 1. (Id.) As
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`illustrated below, Petitioners have alleged, and the Board appears to have taken as
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`true, that the “concave mirror 12” is equivalent to the claimed blocker because it
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`reflects laser energy. (Institution at p. 9-10). The concave mirror 12 is highlighted
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`in red and the chamber 1 has been outlined in green in Gärtner’s Figure 1 below
`
`(annotations added).
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`Gärtner, Figure 1, annotated and cropped for clarity
`
`
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`However, as illustrated in Figure 1, the alleged blocker (concave mirror 12)
`
`is located within the confines of chamber 1 and resides within the discharge
`
`medium 2. Thus, an ordinary artisan would not consider the concave mirror 12
`
`within Gärtner’s discharge chamber to be a blocker under the correct construction
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`of the term—i.e., an element outside of the chamber that deflects or absorbs
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`energy.” (Smith Decl. at ¶ 75 (Ex. 2016).)
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`b.
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`Figure 3 of Gärtner does not disclose the claimed
`blocker
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`
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`Gärtner’s Figure 3 purports to disclose a discharge chamber 35 formed by an
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`ellipsoid mirror 43 and a window having a concave mirror 39 positioned inside the
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`discharge chamber 35. (Gärtner at 6:9-16; Fig. 3 (Ex. 1003).). The concave mirror
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`39 is described as focusing laser energy from laser 38 in an attempt to generate a
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`plasma within the chamber 35. (Id.) The concave mirror 39 is highlighted in red
`
`and the chamber 35 has been outlined in green in the annotated version of
`
`Gärtner’s Figure 3 below (annotations added). Petitioners have alleged (and the
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`Board appears to have agreed in its Institution Decision) that the “concave mirror
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`39” described in Gärtner’s Figure 3 discloses the blocker. (Institution at p. 10).
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`Gärtner, Figure 3, annotated
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`However, as illustrated in Figure 3 above, the alleged blocker (concave
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`
`
`mirror 39) is also housed within the ellipsoid mirror 43 and window forming the
`
`discharge chamber 35. Thus, an ordinary artisan would not consider the concave
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`mirror 39 inside Gärtner’s discharge chamber to be a blocker under the correct
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`construction of this term—i.e., “an element outside of the chamber that deflects or
`
`absorbs energy.” (Smith Decl. at ¶ 77 (Ex. 2016).)
`
`c.
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`Figure 4 of Gärtner does not disclose the claimed
`blocker
`
`Gärtner’s Figure 4 purportedly includes a discharge chamber 36 formed by
`
`an ellipsoid mirror 44 and an output window through which plasma generated light
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`can travel. (Gärtner at 6:9-16; Fig. 4 (Ex. 1003).) Here, Petitioners have alleged
`
`(and the Board appears to have accepted in its Institution Decision), that the
`
`window itself – not a coating or additional component along the window– serves as
`
`a blocker because it purportedly absorbs laser energy. (Institution at p. 10). The
`
`chamber structure has been outlined in green the concave mirror 39 is highlighted
`
`in red in the Gärtner’s Figure 4 below (annotation added).
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`Gärtner, Figure 4, annotated
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`
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`However, as illustrated in Figure 4 above, the output window is not outside
`
`the structure forming the chamber. An ordinary artisan would understand that the
`
`ellipsoid mirror 44 and the output window together define the discharge chamber
`
`36 in which a plasma is generated. Even if the output window absorbs energy 37
`
`from the laser 38, the surface of the output window is within the chamber.
`
`Therefore, an ordinary artisan would not consider the concave mirror 39 within
`
`Gärtner’s discharge chamber so as to be a blocker under the correct construction of
`
`this term—i.e., “an element outside of the chamber that deflects or absorbs energy.
`
`(Smith Decl. at ¶ 78 (Ex. 2016).)
`
`Therefore, an ordinary artisan would understand
`
`that none of
`
`the
`
`embodiments in Gärtner disclose or suggest a blocker as claimed.
`
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`VII. GROUND 2: THE CHALLENGED CLAIMS WOULD NOT HAVE
`BEEN OBVIOUSNESS UNDER § 103 OVER GÄRTNER AND
`IKEUCHI
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`Now that trial has been instituted, to prove that the challenged claims are
`
`obvious based on this Ground, Petitioners must demonstrate by a preponderance of
`
`the evidence that an ordinary artisan would have been motivated to combine
`
`Gärtner and Ikeuchi in a way that meets all limitations of every challenged claim.
`
`35 U.S.C. § 316(e). Petitioners’ arguments and evidence are both factually
`
`incorrect and legally insufficient because an ordinary artisan would not have been
`
`motivated to combine Ikeuchi and Gärtner. Additionally, even if combined, the
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`proposed modifications to Gärtner would have rendered the device inoperable for
`
`its intended use. (Smith Decl. at ¶ 83 (Ex. 2016).)
`
`A. Overview of Ikeuchi
`
`Ikeuchi describes a
`
`light
`
`radiation apparatus
`
`in which non-laser
`
`electromagnetic radiation, such as submillimeter waves, are used to generate
`
`temporary high power pulses of plasma. (Ikeuchi, Abstract; ¶ [0022] (Ex. 1005)).
`
`For example, Ikeuchi describes using a gyrotron to generate the high power, long
`
`wavelength radiation, such as submillimeter waves with a power of 384 GHz and
`
`10 kW. Ikeuchi does not disclose generating light using laser energy. (Ikeuchi,
`
`¶ [0022]) (Ex. 1005); (Smith Decl. at ¶ 81 (Ex. 2016).)
`
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`Nonetheless, Ikeuchi has been cited by Petitioners as disclosing an
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`
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`“electromagnetic radiation absorber 11…whereby electromagnetic radiation can be
`
`prevented from leaking to the outside of the radiation apparatus until light emission
`
`is started.” (Ikeuchi, ¶ [0025]; Fig. 1 (Ex. 1005)). Ikeuchi contemplates, for
`
`example, “carbon black” to absorb the submillimeter waves until the plasma is
`
`generated. (Ikeuchi, ¶ [0025] (Ex. 1005)).
`
`B.
`
`The Modification Proposed by Petitioners Would Have Rendered
`Gärtner’s System Inoperable for its Intended Purpose
`
`“If references taken in combination would produce a ‘seemingly inoperative
`
`device,’…such references teach away from the combination and thus cannot serve
`
`as predicates for a prima facie case of obviousness.” McGinley v. Franklin Sports,
`
`Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001) (citation omitted); see also In re
`
`Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
`
`Here, an ordinary artisan would have been discouraged from modifying
`
`Gärtner to incorporate the absorber 11 of Ikeuchi as proposed by Petioners because
`
`such a modification would have rendered the resulting device inoperable for its
`
`intended use of generating light. (Smith Decl. at ¶ 83 (Ex. 2016).) Specifically,
`
`Petitioners argue that replacing Gärtner’s purported “blockers” – the concave
`
`mirror 12, the concave mirror 39, the output window – with Ikeuchi’s absorber 11
`
`would have been a simple modification of one known element for another.
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`(Petition