Case IPR2015-01279
`U.S. Patent No. 7,786,455
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`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
`_____________
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`Case IPR2015-01279
`U.S. Patent No. 7,786,455
`_____________
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`PATENT OWNER’S RESPONSE
`UNDER 37 C.F.R. § 42.120
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`TABLE OF CONTENTS
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`Case IPR2015-01279
`U.S. Patent No. 7,786,455
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`Page
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`I.
`II.
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`INTRODUCTION ........................................................................................... 1
`THE STATE OF THE ART AND THE CLAIMED INVENTION ............... 2
`A.
`State of the Art and Prior Arc Lamps .................................................... 2
`B.
`Energetiq’s Patented Laser Driven Light Source .................................. 3
`III. CLAIM INTERPRETATION ......................................................................... 4
`A.
`“Light source” ....................................................................................... 5
`B.
`“High brightness light” .......................................................................... 6
`IV. THE DEFINITION OF AN ORDINARY ARTISAN IN THE FIELD ........ 11
`A. Active Workers In The Field And The Inventor ................................. 13
`B.
`Problems In The Art, Prior Art Solutions, Rapidity with Which
`Innovations are Made, and Sophistication of the Technology ............ 13
`Petitioners Provide No Factual Support for their Definition and
`Do Not Rely on Any of the Relevant Factors ..................................... 14
`V. GROUND 1: ANTICIPATION UNDER § 102 BY GÄRTNER ................. 15
`A. Overview of Gärtner ............................................................................ 15
`B. Gärtner does not anticipate claim 19 because it does not enable
`the claims ............................................................................................. 16
`1.
`Gärtner does not provide one skilled in the art with sufficient
`direction or guidance to obtain the claimed “high brightness
`light” without undue experimentation (Wands factors 1, 2) ..... 17
`Gärtner’s lack of guidance regarding working examples weighs
`heavily against a finding that it enables the claimed “high
`brightness light” (Wands factor 3) ............................................ 20
`The state of the prior art (arc lamps) further supports a lack of
`enablement (Wands factors 4, 5) ............................................... 21
`C. Gärtner does not anticipate claim 19 because it does not
`disclose the claimed “high brightness light” ....................................... 22
`VI. GROUND 2: OBVIOUSNESS UNDER § 103 BY GÄRTNER IN VIEW
`OF ERSHOV ................................................................................................. 23
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`C.
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`2.
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`3.
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`VII. CONCLUSION .............................................................................................. 26
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`U.S. Patent No. 7,786,455
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`I.
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`INTRODUCTION
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`Case IPR2015-01279
`U.S. Patent No. 7,786,455
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`This case is about a light source that generates a “high brightness light” that
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`is so much brighter than what preceded it, that it has essentially replaced the arc
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`lamps previously used in semiconductor wafer inspection, lithography, and
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`metrology tools.
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`Energetiq’s invention solved a fundamental problem – how to generate a
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`light brighter than arc lamps. Energetiq patented a novel approach that uses a laser
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`that provides energy to a gas in a chamber to produce a “high brightness light.”
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`Petitioners allege that the challenged claims—all of which require a “high
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`brightness light”—are anticipated based on an incomplete system described in a 20
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`year old reference (Gärtner) that would be incapable of achieving the claimed
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`“high brightness light.” Petitioners also allege that the combination of Gärtner and
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`Ershov renders certain challenged claims obvious. For certain of the claim terms,
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`Petitioners cite Ershov for the concept of a reflective optical element, but fail to
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`explain how such an addition would remedy Gärtner’s failure to enable a high
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`brightness light. Since Petitioners rely only on Gärtner (not Ershov) for the “high
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`brightness light” limitation, and Gärtner does not disclose, let alone enable, to one
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`of ordinary skill in the art the claimed “high brightness light”—which properly
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`construed must be at least as bright as arc lamps—Petitioners’ obviousness
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`arguments must fail and the claims must be confirmed.1
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`U.S. Patent No. 7,786,455
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`II. THE STATE OF THE ART AND THE CLAIMED INVENTION
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`A.
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`State of the Art and Prior Arc Lamps
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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 Decl. at ¶ 8 (Ex. 2016); ’455 Patent at 1:28-44 (Ex.
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`1001) (“The state of the art in, for example, wafer inspection systems involves the
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`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 ’455 Patent
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`at 1:28-44 (Ex. 1001).) 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, undesirably short time to failure, and limits
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`on how bright such sources can get (the spectral brightness of arc lamps is limited
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`by the maximum current density—if too high, it would melt the arc lamps’
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` 1
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` This Response is supported by the declaration of Dr. Philip H. Bucksbaum, a
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`professor in Physics, Applied Physics, and Photon Science at Stanford University.
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`2
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`electrodes). (See, e.g., ’455 Patent at 1:28-44 (Ex. 1001); 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 ¶ 8
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`(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. The industry required light that was at least many times higher
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`brightness than that of existing arc lamps. (Smith Decl. at ¶ 10 (Ex. 2016).)
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`Petitioner ASML agrees that “[s]ignificant . . . brightness improvements” are
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`necessary over arc lamps. (Id.; U.S. Pub. No. US 2013/0329204 A1 at ¶ 0008 (Ex.
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`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 at a light source comprising a chamber, a
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`reflective surface, an ignition source for ionizing a gas within the chamber, and at
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`least one laser for providing energy to the ionized gas to produce a “high
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`brightness light.” Energetiq’s patented laser-driven light source produces a “high
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`U.S. Patent No. 7,786,455
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`brightness light” that is several times brighter than can be achieved by arc lamps.
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`For example, an experiment described in the patent showed a brightness of 8 to
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`18W/(mm2-sr) over the 200-400 nm wavelength band, which is equivalent to a
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`spectral brightness of 40 to 90 mW/(mm2-sr-nm)—i.e., four to ten times the
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`brightness of existing xenon and mercury arc lamps. (’455 Patent at Fig. 3 (Ex.
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`1001); Smith Decl. at ¶ 12 (Ex. 2016).)
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`Energetiq filed its first application on its laser-driven light source technology
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`on March 31, 2006, which issued as U.S. Patent No. 7,435,982. The ’455 Patent is
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`a continuation-in-part of U.S. Patent App. No. 11/395,523. The ’455 Patent issued
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`on August 31, 2010 and is titled “Laser-Driven Light Source.”
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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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`Petitioners proposed constructions for the terms “light source” and “high
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`brightness light.” Petition at 7-12. Energetiq did not file a preliminary response.
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`In its Institution Decision, the Board adopted Petitioners’ proposed constructions
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`based on the record evidence available at the time. Institution Decision at 4-5.
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`Energetiq disagrees with Petitioners proposed constructions (adopted by the Board)
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`and instead proposes the constructions below, which accurately reflect the broadest
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`reasonable interpretation of each claim term.
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`A.
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`“Light source”
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`In its Institution Decision, the Board “determine[d] that [Petitioners’
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`constructions] are consistent with the broadest reasonable construction,” and
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`adopted the following construction:
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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
`ultraviolet (“UV”), extreme UV, vacuum UV,
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`visible, near infrared, middle infrared, or far
`infrared
`regions of
`the
`spectrum, having
`wavelengths within the range of 10 nm to 1,000
`μm
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`Institution Decision at 5. 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 the adopted construction is applied where appropriate.2
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`(Bucksbaum Decl. at ¶ 55 (Ex. 2010).)
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`B.
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`“High brightness light”
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`In its Institution Decision, the Board adopted Petitioners’ proposed
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`construction in the IPR ’1279 Petition:
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`Claim Term
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`Board’s Construction on Institution
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`“high brightness light”
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`Light sufficiently bright to be useful for: inspection,
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` While the Board adopted this construction here, in other parallel inter partes
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`review proceedings, it adopted a different construction with wavelength ranges as
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`initially proposed by Petitioners in this case. Petition at 7-8. Petitioners’ proposed
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`construction is inappropriate. (See Bucksbaum Decl. at ¶ 54 (Ex. 2010).)
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`testing or measuring properties associated with
`semiconductor wafers or materials used in the
`fabrication of wafers, or as a source of illumination in
`a lithography system used in the fabrication of
`wafers, a microscopy system, photoresist curing
`systems, or endoscopic tools.
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`Institution Decision at 5. However, the use of the term “sufficiently bright to be
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`useful” is vague and does not provide an objective line for purposes of either
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`infringement or validity. It is not what an ordinary artisan would recognize to be
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`reasonable in light of the specification and evidence of record. (Bucksbaum Decl.
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`at ¶ 59 (Ex. 2010).)
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`An ordinary artisan, with the ’455 Patent specification in mind, would know
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`that the term refers to:
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`Claim Term
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`Energetiq’s Proposed Construction
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`light that is at least as bright as xenon or mercury arc
`lamps for: inspection, testing or measuring properties
`associated with semiconductor wafers or materials
`used in the fabrication of wafers, or as a source of
`illumination in a lithography system used in the
`fabrication of wafers, a microscopy system, a
`photoresist curing system, or an endoscopic tool
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`“high brightness light”
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`(Bucksbaum Decl. at ¶ 60 (Ex. 2010).)
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`The term “high brightness light” has special meaning in the industry – it is
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`not any bright light. In their Petition, Petitioners argue for their construction, and
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`provide a conclusory statement from their expert, but they provide no evidence in
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`support of their construction. The lack of evidence was for a reason—published
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`literature at the time shows that the term “high brightness” in this industry had a
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`special meaning—one that would not have required any further definition in the
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`patent. See, e.g., patents from that time period: U.S. Pat. No. 7,390,116 at 1:61-63
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`(Ex. 2077) (“A widely used, high-brightness, point-like light source is a high-
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`pressure, compact, Hg (or Hg—Xe) arc lamp.”); U.S. Pat. No. 7,744,241 at 1:19-
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`24 (Ex. 2079) (“One import requirement for a light source is to provide high
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`brightness and high power output at the same time. Currently, light sources for
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`these and other applications are still dominated by traditional light sources such as
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`high-pressure mercury lamps, Xenon lamps, or metal halide lamps.”); U.S. Pat.
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`No. 6,960,872 at 1:41-44 (Ex. 2080) (“An example of a conventional light source
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`with high brightness and a small effective emitting area is an arc lamp source, such
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`as a xenon arc lamp or a mercury arc lamp.”); similar specialized use in this
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`industry can be seen in marketing literature: LuxteL, Ceralux Xenon Arc Lamps at
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`1 (2003-2004) (Ex. 2076) (“CeraLux lamps are designed to give the instrument
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`builder a combination of rugged compactness and extremely high brightness . . .
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`.”); and articles: Xing-Jie Yu, “LED-Based Projection Systems,” J. of Display
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`Tech, Vol. 3, No. 3 (Sept. 2007) (Ex. 2086) (“Despite these drawbacks, arc lamps
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`are used widely in high-brightness projection systems.”); Guenther Derra et al.,
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`“UHP lamp systems for projection applications,” J. Phys. D: Appl. Phys. 38 at
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`2996 (2005) (Ex. 2087) (“Short arc lamps are a key component for projection
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`systems . . . . The light source should be point-like, provide extremely high
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`brightness, high total light flux and a white spectrum.”). (Bucksbaum Decl. at ¶ 61
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`(Ex. 2010).)
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`That it was this special context that was intended, is made manifest in the
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`specification itself. While the specification states that a “high brightness light
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`source can be used for inspection, testing or measuring properties associated with
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`semiconductor wafers or materials used in the fabrication of wafers (e.g., reticles
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`and photomasks),” the patent calls out arc lamps as the lower limit: “arc lamps do
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`not provide sufficient brightness for some applications.” (’455 Patent at 1:17-44
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`(Ex. 1001).) Thus, in the context of the patent, at the time of the invention, a “high
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`brightness light” would have been well-understood in the field to be “at least as
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`bright as xenon or mercury arc lamps.” (Bucksbaum Decl. at ¶ 62 (Ex. 2010).)
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`Petitioners’ construction (adopted by the Board in its Institution Decision),
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`imposes a vagueness and breadth which Petitioners intend to capture prior art that
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`would never have been thought of as “high brightness” at the time of the
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`invention.3 Microsoft Corp. v. Proxyconn, Inc., 789 F.3d at 1298 (“[U]nder the
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`broadest reasonable interpretation, the Board's construction “cannot be divorced
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`from the specification and the record evidence” (internal quotation marks
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`omitted)). (Bucksbaum Decl. at ¶ 63 (Ex. 2010).) Energetiq’s patent specification
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`discloses the problem to be solved—insufficient brightness of xenon and mercury
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`arc lamp sources for certain applications, and refers to its invention as “high
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`brightness,” which can only mean brighter than the xenon and mercury arc lamps
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`at the time. (See ’455 Patent, 1:28-44 (Ex. 1001).) A construction that ignores
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`what this term so clearly meant to those of ordinary skill at the time, in favor of a
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` Petitioners’ proposed construction, if adopted in a Final Written Decision, will
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`also likely lead to an argument in related district court proceedings that the claims
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`are indefinite. To the contrary, Energetiq’s construction, which requires that the
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`light be “at least as bright as xenon or mercury arc lamps,” would not present this
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`issue.
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`generic, vague definition divorced from the specification, would not comport with
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`recognized claim construction principles. (Bucksbaum Decl. at ¶ 63 (Ex. 2010).)
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`“The broadest-construction rubric . . . does not give the PTO an unfettered
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`license to interpret the claims to embrace anything remotely related to the claimed
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`invention. Rather, claims should always be read in light of the specification and
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`teachings in the underlying patent.” In re Suitco Surface, Inc., 603 F.3d 1255,
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`1260 (Fed. Cir. 2010). The Board should interpret “high brightness light” to mean
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`“light that is at least as bright as xenon or mercury arc lamps for: inspection,
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`testing or measuring properties associated with semiconductor wafers or materials
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`used in the fabrication of wafers, or as a source of illumination in a lithography
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`system used in the fabrication of wafers, a microscopy system, a photoresist curing
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`system, or an endoscopic tool.” (Bucksbaum Decl. at ¶ 60 (Ex. 2010).)
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`IV. THE DEFINITION OF AN ORDINARY ARTISAN IN THE FIELD
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`The factors pertinent to the determination of the level of ordinary skill
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`include: “(1) the educational level of the inventor; (2) type of problems
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`encountered in the art; (3) prior art solutions to those problems; (4) rapidity with
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`which innovations are made; (5) sophistication of the technology; and (6)
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`educational level of active workers in the field.” Daiichi Sankyo Co., Ltd. v.
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`Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
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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. (Bucksbaum
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`Decl. at ¶ 48 (Ex. 2010).)
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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 expertise
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`in lasers—knowledge that the active workers in the field did not have.4 Not
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`surprisingly, Petitioners provide no factual support. To the contrary, Energetiq’s
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`definition is fully supported, taking into account the experience of active workers
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`in the field, and further informed by other pertinent factors that determine the level
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`of skill of an ordinary artisan See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501
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`F.3d 1254, 1256 (Fed. Cir. 2007).
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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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`years of work experience with lasers and plasma. Petition at 3.
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`A.
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`Active Workers In The Field And The Inventor
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`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. At the time of the invention, when they
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`were hired, 4 out of 7 individuals in Energetiq’s R&D staff had a basic
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`understanding of lasers, which is consistent in scope with Energetiq’s proposed
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`definition—the rest had no experience in lasers. Importantly, none had the lasers
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`expertise Petitioners propose. A definition that ignores the active works in the
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`field, in favor of one that is divorced from all facts, is improper. (Smith Decl. at ¶¶
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`14-15 (Ex. 2016); Bucksbaum Decl. at ¶ 49 (Ex. 2010).)
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`B.
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`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 high brightness
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`light sources for applications such as semiconductor manufacturing. (See ’455
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`Patent at 1:28-44 (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. Indeed, Energetiq’s invention enabled the
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`sale of the first commercial laser driven light source—a market that did not exist
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`prior to the invention. Innovations had been slow and incremental, consisting of
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`improvements to existing arc lamps. Thus, requiring laser expertise—as proposed
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`by Petitioners—is incorrect and unsupported. (Smith Decl at ¶ 16 (Ex. 2016);
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`Bucksbaum Decl. at ¶ 50 (Ex. 2010).)
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`C.
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`Petitioners Provide 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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`(Bucksbaum Decl. at ¶ 51 (Ex. 2010).)
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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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`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. GROUND 1: ANTICIPATION UNDER § 102 BY GÄRTNER
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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. 1004); Bucksbaum Decl. at ¶ 89 (Ex. 2010).) As far as can be
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`determined, Gärtner discloses technology that was never developed into a
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`commercial product, and that failure makes sense – as discussed below, Gärtner
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`does not enable a light bright enough for industry use. (Bucksbaum Decl. at ¶ 89
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`(Ex. 2010).) Indeed, Gärtner is so far removed from mainstream knowledge that it
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`was unknown to the Inventor, and had never been cited by the Patent Office, until
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`Petitioners identified it to Energetiq in the heat of the dispute. Tellingly, since
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`then, the Patent Office has issued two of Energetiq’s patents with Gärtner in front
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`of it. (Id.; Smith Decl. at ¶ 18 (Ex. 2016).)
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`Gärtner describes using a CO2 laser to try to generate a plasma discharge.
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`(Gärtner at 5 (Ex. 1004); Bucksbaum Decl. at ¶ 90 (Ex. 2010).) While Gärtner
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`purports to be a “highly powerful radiation source,” the reference does not make
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`any disclosure regarding power requirements. (Gärtner at 3:1 (Ex. 1004).)
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`Without that information, there is no basis in Gärtner for this statement.
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`(Bucksbaum Decl. at ¶ 90 (Ex. 2010).)
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`B. Gärtner does not anticipate claim 19 because it does not enable
`the claims
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`“To serve as an anticipating reference, the reference must enable that which
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`it is asserted to anticipate.” Elan Pharm., Inc. v. Mayo Found. for Med. Educ. and
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`Research, 346 F.3d 1051, 1054 (Fed. Cir. 2003). The enablement analysis should
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`be made from the viewpoint of a person experienced in the art encompassing the
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`invention. Elan Pharm., 346 F.3d at 1055.
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`The appropriate inquiry to determine whether a prior art reference is
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`enabling is “whether a person of ordinary skill in the art could make or use the
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`claimed invention without undue experimentation based on the disclosure of that
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`particular document.” In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013) (emphasis
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`added).
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` The factors relevant
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`to
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`the determination of whether undue
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`experimentation
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`is required
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`include: “(1) the quantity of experimentation
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`necessary, (2) the amount of direction or guidance presented, (3) the presence or
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`absence of working examples, (4) the nature of the invention, (5) the state of the
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`prior art, (6) the relative skill of those in the art, (7) the predictability or
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`U.S. Patent No. 7,786,455
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`unpredictability of the art, and (8) the breadth of the claims.” In re Wands, 858
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`F.2d 731, 737 (Fed. Cir. 1988). The Federal Circuit has since added that “it is not
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`necessary that a court review all the Wands factors to find a disclosure enabling.
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`They are illustrative, not mandatory.” Amgen, Inc. v. Chugai Pharmaceutical Co.,
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`Ltd., 927 F.2d 1200, 1213 (Fed. Cir. 1991).
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`1.
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`Gärtner does not provide one skilled in the art with
`sufficient direction or guidance to obtain the claimed “high
`brightness light” without undue experimentation (Wands
`factors 1, 2)
`Here, the Wands factors show that Gärtner does not enable an ordinary
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`artisan to make or use the invention claimed in the ’455 Patent. (Bucksbaum Decl.
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`at ¶ 91 (Ex. 2016).) Gärtner does not provide the skilled artisan with enough
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`technical information to produce the claimed “high brightness light” without undue
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`experimentation. (Bucksbaum Decl. at ¶ 91 (Ex. 2016).) “[W]here there is no
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`disclosure of any specific starting material or of any of the conditions under which
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`a process can be carried out, undue experimentation is required.” Automotive
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`Technologies Intern., Inc. v. BMW of North Am., Inc., 501 F.3d 1274 (Fed. Cir.
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`2007).
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`First, Gärtner makes no explicit disclosure regarding the “brightness” that
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`the Gärtner system can achieve. While Gärtner discloses a temperature, it does not
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`disclose sufficient detail for one skilled in the art to determine whether that
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`temperature would result in a plasma that meets the “high brightness light” claim
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`limitation. (Bucksbaum Decl. at ¶ 92 (Ex. 2010).) Because Gärtner does not
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`disclose, for instance, the emissivity of the plasma, one skilled in the art would not
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`have been able to connect Gärtner’s temperature disclosure to a brightness level.
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`(See Bucksbaum Decl. at ¶ 92 (Ex. 2010).) That is, Gärtner’s lack of disclosure
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`would have left one skilled in the art without sufficient guidance to accurately
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`determine the brightness he achieved. (Bucksbaum Decl. at ¶ 92 (Ex. 2010).)
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`Petitioners hand-wave Gärtner’s disclosure of a “highly powerful radiation
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`source” as meaning a “high brightness light,” but the brightness of a plasma is
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`different from the power radiated. Power refers to the total energy flowing from a
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`source per unit time, while brightness is defined as power per unit area into a unit
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`solid angle. (See ’455 Patent at 8:27-28 (Ex. 1001) (“Brightness is the power
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`radiated by a source of light per unit surface area into a unit solid angle.”);
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`Bucksbaum Decl. at ¶ 93 (Ex. 2010).) Thus at the same radiated power, a smaller
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`plasma would result in a brighter light. (Id.) That is, a light source radiating 1
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`watt of power from a circular area having a diameter 1 cm into a certain solid angle
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`is 100 times less bright than a light source which radiates the same 1 watt from a
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`circular area which is 1 mm in diameter. (Id.)
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`Here, Gärtner discloses his belief that with his invention, theoretically, “it is
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`possible to obtain, near ellipsoidal plasmas from 4 mm to 5 mm in diameter up to a
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`temperature of 16000 K, for example in an argon or xenon atmosphere as active
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`medium with a working pressure of 106 Pa.” (Gärtner at 5:14-16 (Ex. 1004).) But
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`in contrast, an illustrative embodiment of the ’455 Patent describes a plasma with a
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`0.1 mm diameter—40 to 50 times smaller than Gärtner’s. (’455 Patent at 12:11-43
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`(Ex. 1001); Gärtner at 5:14-16 (1004).) Since no power levels are disclosed in
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`Gärtner, based on their relative size and assuming a comparable power, Gärtner’s
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`plasmas would be expected to be 1,600 to 2,500 times less bright than plasmas
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`made according to the ’455 Patent. (Bucksbaum Decl. at ¶ 95 (Ex. 2010).)
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`Gärtner’s lack of enablement is demonstrated by the amount of energy that
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`would be required to create Gärtner’s plasma. Gärtner does not provide a person
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`of ordinary skill in the art with enough detail on how to make a system that can
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`achieve temperatures up to 16,000 K. (Bucksbaum Decl. at ¶ 96 (Ex. 2010).)
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`The amount of energy required to create a plasma in a pulsed system, like in
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`Gärtner, can be compared as the ratio of the plasma diameters cubed. (Bucksbaum
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`Decl. at ¶ 97 (Ex. 2010).) Gärtner discloses plasmas having diameters of 4 mm to
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`5 mm. (Gärtner at 5:14-16 (1004).) In contrast, the ’455 Patent describes a plasma
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`with a 0.1 mm diameter. (’455 Patent at 12:11-43 (Ex. 1001).) An ordinary
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`artisan, presented with the respective plasma diameters of Gärtner and those
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`disclosed by the ’455 Patent, would understand that Gärtner’s plasmas would
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`require at least 64,000 to 125,000 times the amount of absorbed laser energy as
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`those disclosed in the ’455 Patent. (Bucksbaum Decl. at ¶ 97 (Ex. 2010).) Yet,
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`Gärtner purports to disclose a general variety of laser, but again, it provides no
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`disclosure related to the laser’s power, or how it could be achieved. (Id.)
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`Here, Gärtner does not provide sufficient guidance how its “possible” results
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`could be achieved. Edmund Optics, Inc. v. Semrock, Inc., IPR2014-00599, Paper
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`No. 72 at 32 (PTAB Sept. 16, 2015) (finding that Petitioner had not met their
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`burden “[u]pon consideration of the various Wands factors, including the absence
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`of any working examples
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`that demonstrate
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`that [Petitioner’s]
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`theoretical
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`calculations are capable of realization”). (Bucksbaum Decl. at ¶ 97 (Ex. 2010).)
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`2.
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`Gärtner’s lack of guidance regarding working examples
`weighs heavily against a finding that it enables the claimed
`“high brightness light” (Wands factor 3)
`The absence of working example weighs heavily against a finding that
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`Gärtner enables the “high brightness light” claimed in the ’455 Patent. See
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`Edmund Optics, Inc. v. Semrock, Inc., IPR2014-00599, Paper No. 72 at 32 (PTAB
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`Sept. 16, 2015) (finding that Petitioner had not met their burden “[u]pon
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`Case