Cases IPR2015-01300 and IPR2015-01303
`U.S. Patent No. 7,435,982
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`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.
`
`ENERGETIQ TECHNOLOGY, INC.,
`Patent Owner
`_____________
`
`Cases IPR2015-01300 and
`IPR2015-01303
`U.S. Patent No. 7,435,982
`_____________
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`PATENT OWNER’S RESPONSE
`UNDER 37 C.F.R. § 42.120
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`i
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`Cases IPR2015-01300 and IPR2015-01303
`U.S. Patent No. 7,435,982
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
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`
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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” .......................................................................... 7
`C.
`“Sustained” .......................................................................................... 12
`IV. THE DEFINITION OF AN ORDINARY ARTISAN IN THE FIELD ........ 15
`A. Active Workers In The Field And The Inventor ................................. 16
`B.
`Problems In The Art, Prior Art Solutions, Rapidity with Which
`Innovations are Made, and Sophistication of the Technology ............ 17
`Petitioners Provide No Factual Support for their Definition and
`Do Not Rely on Any of the Relevant Factors ..................................... 17
`V. GROUND 1: ANTICIPATION UNDER § 102 BY GÄRTNER ................. 18
`A. Overview of Gärtner ............................................................................ 18
`B. Gärtner does not anticipate the challenged claims reciting a
`“high brightness light” because it does not enable the claims ............ 19
`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) ..... 20
`Gärtner’s pulsed laser system would not enable an ordinary
`artisan to create a laser sustained plasma, because it does not
`provide a working example (Wands factor 3) ........................... 24
`The state of the prior art (arc lamps) further supports a lack of
`enablement (Wands factors 4, 5) ............................................... 24
`C. Gärtner does not anticipate because it does not provide
`sufficient disclosure on “high brightness light” .................................. 25
`VI. GROUND 2: OBVIOUSNESS UNDER § 103 BY GÄRTNER .................. 26
`ii
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`C.
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`2.
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`3.
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`VII. CONCLUSION .............................................................................................. 28
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`Cases IPR2015-01300 and IPR2015-01303
`U.S. Patent No. 7,435,982
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`iii
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`I.
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`INTRODUCTION
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`Cases IPR2015-01300 and IPR2015-01303
`U.S. Patent No. 7,435,982
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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—almost all of which require a
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`“high brightness light”—are anticipated (and rendered obvious) based on an
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`incomplete system described in a 20 year old reference (Gärtner) that would be
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`incapable of achieving the claimed “high brightness light.” But, Gärtner neither
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`anticipates nor renders obvious the invention to a person of ordinary skill in the art
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`at the time of the invention. Because Petitioners have not met their burden of
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`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. Philip H. Bucksbaum, a
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`professor in Physics, Applied Physics, and Photon Science at Stanford University.
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`1
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`II. THE STATE OF THE ART AND THE CLAIMED INVENTION
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`Cases IPR2015-01300 and IPR2015-01303
`U.S. Patent No. 7,435,982
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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); ’982 Patent at 1:20-22 (Ex.
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`1101)2 (“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 ’982 Patent
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`at 1:20-35 (Ex. 1101).) 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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`electrodes). (See, e.g., ’982 Patent at 1:20-35 (Ex. 1101); Smith Decl. at ¶ 8 (Ex.
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`2016).)
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` 2
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` All citations are to IPR ’1300, unless otherwise noted.
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`Cases IPR2015-01300 and IPR2015-01303
`U.S. Patent No. 7,435,982
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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, an
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`ignition source for ionizing a gas within the chamber, and at least one laser for
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`providing energy
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`to
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`the
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`ionized gas
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`to produce a “high brightness
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`light.” Energetiq’s patented laser-driven light source produces a “high brightness
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`light” that is several times brighter than can be achieved by arc lamps. For
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`example, an experiment described in the patent showed a brightness of 8 to
`3
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`18W/(mm2-sr) over the 200-400 nm wavelength band, which is equivalent to a
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`Cases IPR2015-01300 and IPR2015-01303
`U.S. Patent No. 7,435,982
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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. (’982 Patent at Fig. 3 (Ex.
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`1101); Smith Decl. at ¶ 12 (Ex. 2016).)
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`Energetiq filed U.S. Application No. 11/395,523 on March 31, 2006, which
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`issued as U.S. Pat. No. 7,435,982, entitled “Laser-Driven Light Source,” on
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`October 14, 2008.
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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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`Cases IPR2015-01300 and IPR2015-01303
`U.S. Patent No. 7,435,982
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`Petitioners proposed constructions for the terms “light source” and “high
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`brightness light” and two means-plus-function terms. IPR ’1300 Petition at 7-14;
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`IPR ’1303 Petition at 7-10. Energetiq did not file a preliminary response. In its
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`Institution Decision, the Board adopted Petitioners’ proposed constructions based
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`on the record evidence available at the time. Institution Decision at 6-8. Energetiq
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`disagrees with Petitioners proposed constructions (adopted by the Board) and
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`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 adopted the following construction
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`which was proposed by Petitioners:
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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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`5
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`Claim Term
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`“light source”
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`Institution Decision at 6. While Energetiq asserts that the term “light source”
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`Cases IPR2015-01300 and IPR2015-01303
`U.S. Patent No. 7,435,982
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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.
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`(Bucksbaum Decl. at ¶ 55 (Ex. 2010).) However, Petitioners’ proposed
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`construction (adopted by the Board in its Institution Decision) is inappropriate
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`because the specific wavelength ranges listed above, for the different regions of the
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`spectrum, do not comport with the broadest reasonable interpretation. (Id. at ¶ 56.)
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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”).) (Bucksbaum Decl. at ¶ 57 (Ex. 2010).)
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`In addition,
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`the proposed wavelength ranges conflict with explicit
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`wavelength disclosures in patent family member U.S. Pat. No. 9,048,000, a
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`continuation-in-part of the ’982 Patent. Compare IPR ’1300 Petition at 7 (defining
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`ultraviolet as “200 nm to 400 nm”), with ’000 Patent at 20:32-35 (Ex. 2075)
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`(“Ultraviolet light is electromagnetic energy with a wavelength shorter than that of
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`visible light, for instance between about 50 nm and 400 nm”).) (Bucksbaum Decl.
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`Cases IPR2015-01300 and IPR2015-01303
`U.S. Patent No. 7,435,982
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`at ¶ 57 (Ex. 2010).)
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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
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`ranges of
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`electromagnetic radiation. (Decl. of J. Gary Eden at ¶ 32 (Ex. 1103).) 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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`(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 correct.
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`Q: So in your opinion would near-infrared include -- strike that. In your opinion
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`would near-infrared be above 1,000? A: Yes. I think it’s been a long time ago, but
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`my recollection is that the definition that’s offered there is slightly longer than the
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`limit that I’m proposing in the [Declaration].”). (Bucksbaum Decl. at ¶ 58 (Ex.
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`2010).)
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`B.
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`“High brightness light”
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`Cases IPR2015-01300 and IPR2015-01303
`U.S. Patent No. 7,435,982
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`In its Institution Decision, the Board adopted Petitioners’ proposed
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`construction in the IPR ’1300 Petition: 3
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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,
`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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`Institution Decision at 6. 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 ’982 Patent specification in mind, would know
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`that the term refers to:
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` 3
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` Petitioners’ proposed construction in the IPR ’1303 Petition contains minor
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`typographical differences, but is materially the same as their construction proposed
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`in the IPR ’1300 Petition, adopted by the Board and reproduced here.
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`Cases IPR2015-01300 and IPR2015-01303
`U.S. Patent No. 7,435,982
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`Claim Term
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`Energetiq’s Proposed Construction
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`“high brightness light”
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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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`(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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`Cases IPR2015-01300 and IPR2015-01303
`U.S. Patent No. 7,435,982
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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.” (’982 Patent at 1:20-40
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`Cases IPR2015-01300 and IPR2015-01303
`U.S. Patent No. 7,435,982
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`(Ex. 1101).) 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.4 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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` 4
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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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`brightness,” which can only mean brighter than the xenon and mercury arc lamps
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`Cases IPR2015-01300 and IPR2015-01303
`U.S. Patent No. 7,435,982
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`at the time. (See ’982 Patent at 1:20-40 (Ex. 1101).) 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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`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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`C.
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`“Sustained”
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`Neither Petitioners nor Energetiq proposed a construction for the term
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`“sustained” prior to institution—and the Board did not construe it in its Decision.
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`But given some of the arguments Petitioners have made in their brief confusing
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`“initiating” or “generating” a plasma with “sustaining” a plasma, it is believed the
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`Board should define the term, and make it clear that it is used according to its
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`Cases IPR2015-01300 and IPR2015-01303
`U.S. Patent No. 7,435,982
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`ordinary and customary meaning. (Bucksbaum Decl. at ¶ 64 (Ex. 2010).) That is,
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`the Board should adopt the definition:
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`Claim Term
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`“sustained”
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`(Id.)
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`Energetiq’s Proposed Construction
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`maintained without interruption
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`The term “sustain” is used in the claims to contrast the behavior of the
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`plasma from other terms relating to the plasma, such as “generate” or “initiate.”
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`An illustrative use of the term appears in claim 78, which recites: “a sealed
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`chamber for containing a laser sustained plasma that emits a high brightness light
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`produced by the laser sustained plasma by providing substantially continuous laser
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`energy to an ionized medium within the chamber.” (’982 Patent at claim 78
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`(emphasis added) (Ex. 1101); Bucksbaum Decl. at ¶ 65 (Ex. 2010).) The ’982
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`Patent discusses that “[i]n one embodiment, no ignition source 140 is required and
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`instead the laser source 104 is used to ignite the ionizable medium and to generate
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`the plasma 132 and to sustain the plasma and the high brightness light 136 emitted
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`by the plasma 132.” (’982 Patent at 7:24-28 (emphases added) (Ex. 1101).)
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`(Bucksbaum Decl. at ¶ 65 (Ex. 2010).)
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`Cases IPR2015-01300 and IPR2015-01303
`U.S. Patent No. 7,435,982
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`An ordinary artisan would understand that to “sustain a plasma” means to
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`maintain the plasma without interruption. Petitioners’ expert acknowledges he
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`understood the term “sustain” to mean “to maintain the existence of” such that the
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`“plasma would continue to exist.” (Eden Tr. 66:16-19; 68:18-21 (Ex. 2006);
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`Bucksbaum Decl. at ¶ 66 (Ex. 2010).) The term “laser sustained plasma” is
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`frequently used in the art to contrast plasmas exhibiting other modes of operation,
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`such as “pulsed” plasmas existing only transiently, to which the term sustain would
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`not be applied. (See D. Keefer, “Laser Sustained Plasmas,” Chapter 4, in
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`Radziemski et al., Laser-Induced Plasmas and Applications 172 (1989) (Ex. 1106)
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`(“High-energy pulsed lasers can generate plasma breakdown directly within a gas
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`that results in a transient expanding plasma similar to an explosion.”); Bucksbaum
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`Decl. at ¶ 66 (Ex. 2010).)
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`The customary and ordinary meaning of the term is also reflected in and
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`consistent with dictionary definitions. Webster’s Third New International
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`Dictionary (2002) defines “sustain” to mean “to cause to continue (as in existence
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`or a certain state or in force or intensity): to keep up esp. without interruption,
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`diminution, or flagging : maintain.” (Webster’s Third New International Dictionary
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`of the English Language, Unabridged, “Sustain,” (2002) (Ex. 2023). Definitions
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`found in other dictionary references all reflect the same underlying premise, that to
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`“sustain” something means to “maintain without interruption.” (See also The
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`Merriam-Webster Dictionary (2004) (Ex. 2024) (sustain, “to keep going:
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`Cases IPR2015-01300 and IPR2015-01303
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`prolong”); The American Heritage Dictionary of the English Language (4th ed.
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`2006) (Ex. 2025) (sustain, “To keep in existence; maintain.”).) Thus, Energetiq
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`submits that the Board should interpret “sustained” to mean “maintain without
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`interruption.” (Bucksbaum Decl. at ¶ 67 (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.5 Not
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`U.S. Patent No. 7,435,982
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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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`A. 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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` 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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`field, in favor of one that is divorced from all facts, is improper. (Smith Decl. at ¶¶
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`Cases IPR2015-01300 and IPR2015-01303
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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 ’982
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`Patent at 1:20-40 (Ex. 1101).) 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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`Cases IPR2015-01300 and IPR2015-01303
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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. 1104); 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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`Cases IPR2015-01300 and IPR2015-01303
`U.S. Patent No. 7,435,982
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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. 1104); 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. 1104).)
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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 the challenged claims reciting a “high
`brightness light” 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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`Cases IPR2015-01300 and IPR2015-01303
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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