IPR2015-01362
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ASML NETHERLANDS B.V., EXCELITAS TECHNOLOGIES CORP., AND
`QIOPTIQ PHOTONICS GMBH & CO. KG,
`Petitioners
`
`v.
`
`ENERGETIQ TECHNOLOGY, INC.,
`Patent Owner
`_____________
`
`Case IPR2015-01362
`U.S. Patent No. 8,969,841
`
`_____________
`
`DECLARATION OF PHILIP H. BUCKSBAUM, PH.D.
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`
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`IPR2015-01362
`U.S. Patent No. 8,969,841
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`TABLE OF CONTENTS
`INTRODUCTION ............................................................................................... 1 
`I. 
`II.  SUMMARY OF OPINIONS .............................................................................. 3 
`III.  QUALIFICATIONS ......................................................................................... 3 
`IV.  MATERIALS REVIEWED ........................................................................... 12 
`V.  LEGAL STANDARDS ..................................................................................... 13 
`A.  Obviousness ................................................................................................. 14 
`B. 
`Prior Art ....................................................................................................... 20 
`VI.  PERSON OF ORDINARY SKILL IN THE ART ......................................... 20 
`A.  Active Workers In The Field And The Inventor ......................................... 21 
`Problems In The Art, Prior Art Solutions, Rapidity with Which Innovations
`B. 
`are Made, and Sophistication of the Technology ................................................. 21 
`Petitioners Provides No Factual Support for their Definition and Do Not
`C. 
`Rely On Any Of The Relevant Factors ................................................................ 22 
`VII.  CLAIM CONSTRUCTION ........................................................................... 23 
`A.  Light ............................................................................................................ 24 
`B.  Light Source ................................................................................................ 26 
`C.  Laser Driven Light Source .......................................................................... 26 
`D.  Sustain ......................................................................................................... 27 
`VIII.  BACKGROUND TECHNOLOGY OVERVIEW ...................................... 30 
`A.  Plasma Light Background ........................................................................... 31 
`1. 
`Plasma Basics ........................................................................................... 31 
`2. 
`Spectral Brightness, Spectral Intensity, Brightness, Intensity, and Power
`of a Plasma ........................................................................................................ 32 
`B. 
`Powering Plasma Light Sources .................................................................. 36 
`1. 
`Sustained plasma absorption of laser energy under inverse
`bremsstrahlung .................................................................................................. 38 
`2.  Wavelength’s effect on brightness under inverse bremsstrahlung .......... 40 
`3. 
`Effect of laser power on brightness under inverse bremsstrahlung ......... 49 
`4. 
`Plasma absorption of laser energy for other types of plasma .................. 50 
`INVENTION OVERVIEW ............................................................................ 52 
`IX. 
`X.  SUMMARY OF PETITIONERS’ ARGUMENT ............................................ 55 
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`XI.  FACTUAL ASSESSMENT OF INSTITUTED GROUNDS ........................ 56 
`A.  Overview of Cited References .................................................................... 57 
`1.  Gärtner ...................................................................................................... 57 
`2.  Mourou ..................................................................................................... 59 
`3.  Kensuke .................................................................................................... 61 
`4. 
`Silfvast ...................................................................................................... 62 
`B.  The Claims Would Not Have Been Obvious Over The Combination Of
`Gärtner In View Of Mourou Or Kensuke And Silfvast ....................................... 63 
`1.  An ordinary artisan would not have redesigned Gärtner by replacing its
`laser with a shorter wavelength laser ................................................................ 63 
`2. 
`The claimed invention revealed unexpected results ................................ 75 
`C. 
`Petitioners Fail To Demonstrate Why An Ordinary Artisan Would Have
`Combined Gärtner With Mourou of Kensuke and Silfvast .................................. 80 
`Petitioners’ argument that suitable shorter wavelength lasers had only
`1. 
`become available at the time of the invention is incorrect ............................... 80 
`There would have been no expectation of success using a shorter
`2. 
`wavelength laser to sustain a plasma ................................................................ 84 
`3.  A device resulting from the proposed combination would have been
`inoperative for its intended purpose .................................................................. 85 
`4.  Combining Gärtner with either Mourou or Kensuke and Silfvast would
`not have “sustained” a plasma as required by the claims ................................. 86 
`D.  A Person Skilled In The Art Would Also Have Been Discouraged From
`Modifying Gärtner’s System to Increase Pressure ............................................... 91 
`XII.  OBJECTIVE EVIDENCE SHOWS THAT THE CLAIMS WOULD NOT
`HAVE BEEN OBVIOUS ........................................................................................ 97 
`A.  Nexus ........................................................................................................... 98 
`B.  Long-Felt Need ............................................................................................ 99 
`C. 
`Industry Skepticism And Failure Of Others ..............................................100 
`D.  Commercial Success ..................................................................................102 
`E. 
`Industry Praise ...........................................................................................104 
`F.  Copying .....................................................................................................106 
`G.  Licensing ...................................................................................................107 
`H. 
`Investment In R&D ...................................................................................108 
`iii
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`XIII.  PETITIONERS INCORRECTLY ASSERT THAT THE ’000 PATENT IS
`NOT ENTITLED TO A PRIORITY CLAIM TO THE ’455 PATENT ...............109 
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`IPR2015-01362
`U.S. Patent No. 8,969,841
`I, Philip H. Bucksbaum, Ph.D., hereby declare as follows:
`
`
`I.
`
`INTRODUCTION
`1. My name is Philip H. Bucksbaum.
`
`2.
`
`I understand that in response to a Petition submitted by ASML
`
`Netherlands B.V., Excelitas Technologies Corp., and Qioptiq Photonics GmbH &
`
`Co. KG (collectively, “Petitioners”), the Patent Trial and Appeal Board (“Board”)
`
`instituted an inter partes review, IPR2015-01375 (“IPR ’1375”), as to claims 1,
`
`15, and 18 of U.S. Patent No. 9,048,000 (the ’000 Patent). I understand that the
`
`’000 Patent is titled “High Brightness Laser-Driven Light Source” by Donald K.
`
`Smith and that the ’000 Patent is currently assigned to Energetiq Technology, Inc.
`
`of Woburn, MA (“Energetiq”).
`
`3.
`
`I also understand that in response to a Petition submitted by ASML
`
`Netherlands B.V., Excelitas Technologies Corp., and Qioptiq Photonics GmbH &
`
`Co. KG (collectively, “Petitioners”), the Patent Trial and Appeal Board (“Board”)
`
`instituted an inter partes review, IPR2015-01362 (“IPR ’1362”), as to claims 1, 2,
`
`3, and 7 of U.S. Patent No. 8,969,841 (the ’841 Patent). I understand that the ’841
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`Patent is titled “Light Source for Generating Light from a Laser Sustained plasma
`
`in a Above-Atmospheric Pressure Chamber” by Donald K. Smith and that the ’841
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`Patent is currently assigned to Energetiq Technology, Inc. of Woburn, MA
`
`(“Energetiq”).
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`IPR2015-01362
`U.S. Patent No. 8,969,841
`I have been retained on behalf of Energetiq as an independent expert
`
`4.
`
`in this inter partes review proceeding to provide expert opinions on the technology
`
`at issue. Specifically, I have been asked to provide my expert opinion relating to
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`the patentability of claims 1, 15, and 18 of the ’000 Patent and the patentability of
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`claims 1, 2, 3, and 7 of the ’841 Patent relative to the instituted grounds based on
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`the Gärtner, Mourou, Kensuke, and Silfvast references. Unless specifically stated,
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`my opinions herein apply to the claimed technology in both the ’000 patent and
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`the ’841 patent.
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`5.
`
`I understand that Petitioners have submitted an expert Declaration by
`
`Dr. Gary Eden (“Declaration”) in support of their Petition to assert that the claims
`
`at issues are invalid.
`
`6.
`
`I confirm to the best of my knowledge the exhibits cited in this
`
`declaration are true and accurate copies of what they purport to be, and that an
`
`artisan in the field would reasonably rely on them to formulate opinions such as
`
`those set forth in this declaration.
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`7.
`
`For my time consulting on this matter, I am being compensated at my
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`customary consulting rate. I am also being reimbursed for reasonable expenses
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`incurred for my work on this matter. My compensation does not depend on the
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`conclusions I reach in this declaration nor does it depend on the outcome of this
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`proceeding.
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`II.
`
`
`SUMMARY OF OPINIONS
`8.
`
`Regarding validity of the patents-at-issue, it is my opinion that the
`
`challenged claims are valid and that alleged prior art references Gärtner, Mourou,
`
`Kensuke, or Silfvast do not render obvious claims 1, 15, or 18 of the ’000 Patent
`
`or claims 1, 2, 3, or 7 of the ’841 Patent.
`
`9.
`
`Specifically, Gärtner in view of Mourou and Silfvast does not render
`
`obvious claims 1, 15, or 18 of the ’000 Patent. Further, Gärtner in view of
`
`Kensuke and Silfvast does not render obvious claims 1, 15, or 18 of the ’000
`
`Patent.
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`10. Also, Gärtner in view of Mourou and Silfvast does not render obvious
`
`claims 1, 2, 3, or 7 of the ’841 Patent. Further, Gärtner in view of Kensuke and
`
`Silfvast does not render obvious claims 1, 2, 3, or 7 of the ’841 Patent.
`
`
`III. QUALIFICATIONS
`11. My educational background, professional experience, and
`
`qualifications as an expert in the fields of physics of laser interactions with atoms,
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`molecules, light sources, and plasmas are detailed in my latest curriculum vitae
`
`(“CV”) and list of publications. (See Curriculum Vitae of Philip H. Bucksbaum
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`(Ex. 2074) 1.)
`
`12. For over 35 years I have worked professionally as a researcher and
`
`educator in the fields of atomic and molecular physics, ultrafast laser-matter
`
`interactions, and vacuum ultraviolet and x-ray science.
`
`13.
`
`I am the Marguerite Blake Wilbur Professor in Natural Science at
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`Stanford University, with appointments in the departments of Physics, Applied
`
`Physics, and Photon Science. I am also the Director of the Stanford Photon
`
`Ultrafast Laser Science and Engineering (PULSE) Institute at Stanford University
`
`and the SLAC National Accelerator Laboratory. I have been a Professor on the
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`faculty of Stanford since 2006. My current Stanford faculty duties include
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`chairing the Graduate Admissions Committee in Applied Physics, which selects
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`which students from around the world are admitted to Masters and Ph.D. degree
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`programs at Stanford.
`
`14.
`
`I hold several advisory roles in addition to my normal research,
`
`teaching, and management positions at Stanford. Among these, I currently chair a
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`National Academy of Sciences study commissioned by the United States
`
`Department of Energy, the Army, and the Navy, to advise the government on high
`
`intensity lasers. I am also a member of the National Science Foundation Advisory
`
`
`1 Unless otherwise noted, exhibit numbers listed herein refer to Exhibits which
`have the same exhibit numbers in both IPR2015-01375 (“IPR ’1375”) and
`IPR2015-01362 (“IPR ’1362”).
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`Committee for their Mathematics and Physical Sciences Directorate. I am also a
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`member of the National Photonics Initiative Steering Committee, which advises
`
`the United States Congress and the executive branch on emerging opportunities in
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`optics and photonics technologies.
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`15.
`
`I have been working in the Physics field for over 35 years. During
`
`my career, I have held the following positions: Peter Frankin University Professor
`
`of Physics, University of Michigan, 2005-2006; Otto Laporte Collegiate Professor
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`of Physics, University of Michigan, 1998-2006; Professor of Physics, University
`
`of Michigan, 1990-1998; Adjunct Associate Professor of Applied Physics,
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`Columbia University, 1989-1990; Member of Technical Staff, Bell Laboratories,
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`Murray Hill, NJ, 1982-1990; Post-doctoral Member of Technical Staff, Bell
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`Laboratories, Holmdel, NJ, 1981-1982; Post-doctoral Fellow, Lawrence Berkeley
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`National Laboratory, Berkeley, CA, 1980-1981.
`
`16.
`
`I hold the following academic degrees: A.B. magna cum laude in
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`Physics from Harvard College, Cambridge, MA, 1975; M.A. in Physics from the
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`University of California at Berkeley, 1978; and Ph.D. in Physics from the
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`University of California at Berkeley, 1980.
`
`17. As a result of my career, I have been fortunate to be the recipient of
`
`many accolades from both my peers and my employers. I have received the
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`following professional honors and awards for my research and teaching activities:
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`Fellow of the National Academy of Sciences, since 2004; Fellow of the American
`
`Academy of Arts and Sciences, since 2012; Fellow of the American Physical
`
`Society, since 1990; Fellow of the Optical Society of America, since 1995, and
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`President of the Optical Society in 2014; John Simon Guggenheim Memorial
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`Foundation Fellow, 1996-1997; Miller Visiting Research Fellow, University of
`
`California at Berkeley, 1996; University of Michigan Sokol Award for
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`Contributions to Graduate Education and Research, 2001; Distinguished Traveling
`
`Lecturer, Division of Laser Science, American Physical Society, 1996-1999;
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`American Physical Society Centennial Speaker, 1998-1999; Distinguished Faculty
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`Research Award, University of Michigan, 1996; Rosenberg Lecturer in Physics,
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`Yale University, 1995; NATO Post-doctoral Fellowship, 1981; National Science
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`Foundation Graduate Fellowship, 1975-1978; Elected to Phi Beta Kappa, 1975.
`
`18.
`
`I have conducted or otherwise managed research in a wide variety of
`
`technical areas throughout my career. Some of my most relevant research has
`
`been on the physics of ultrafast laser-matter interactions and use of infrared laser
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`energy to generate vacuum ultraviolet light sources known as high harmonics
`
`(HHG), and I have worked in a number of areas related to laser-driven ionization,
`
`laser-induced ponderomotive forces and other laser and plasma light sources
`
`during my career. My graduate work started in 1975 at the University of
`
`California at Berkeley, in a laser spectroscopy laboratory. My graduate research
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`required designing, building, and using flashlamp-pumped tunable lasers, so I have
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`had a familiarity with plasma light technology since the beginning of my career. I
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`built several different kinds of lasers in pursuit of my doctoral research, including
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`internally and externally frequency doubled pulsed and continuous (cw) lasers and
`
`infrared optical parametric oscillators. My doctoral dissertation in 1980 concerned
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`the measurement of the strength of the neutral weak interaction in laser-induced
`
`atomic transitions.
`
`19. My postdoctoral research area at Lawrence Berkeley National
`
`Laboratory involved experimental tests of electroweak interactions in atoms, and I
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`co-authored a textbook on this emerging area of physics in 1981. Thereafter I took
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`a position at Bell Laboratories, where I broadened my technical pursuits in my
`
`research and participated in building one of the first high-powered ultrafast
`
`ultraviolet laser amplifier systems involving amplification in excimers in a plasma
`
`discharge. I used this new light source to study nonlinear vacuum ultraviolet
`
`(VUV) light source generation in atomic gases. My group, for a time, held the
`
`record for the shortest wavelength coherent radiation ever produced. I then used
`
`this source to develop two new fields of physics research. The first was ultrafast
`
`laser-melting of semiconductors, where I measured the thermodynamic properties
`
`of the liquid-to-amorphous silicon transition. The second area was ultrafast time
`
`resolved vacuum ultraviolet photoemission spectroscopy, where my colleagues
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`and I measured the electronic band structure of transiently excited semiconductors.
`
`20. By 1985, I had become a permanent member of the research staff at
`
`Bell Labs. I began investigations in a new area of high field laser-atom physics. I
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`helped to establish the field of high field laser-atom physics and discovered a
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`number of new phenomena and published several written materials on the
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`discovery. My most important discoveries in this field concerned the role of
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`ponderomotive forces in strong laser-atom phenomena such as ionization. I also
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`became interested in the production of terahertz radiation, and was among the first
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`to recognize the unique properties of ultra-broadband “half-cycle” pulses of
`
`radiation that could be produced in the terahertz spectral region.
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`21. After my time at Bell Labs, I went to the University of Michigan in
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`1990 as a Full Professor in Physics, and continued my study of intense laser-
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`ionized gases. For example, my students and I explored new properties of
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`coherent vacuum ultraviolet radiation generated by focusing intense lasers into a
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`dense (0.1-1 atmosphere) gas. I also began two new areas of research: coherent
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`electron wave packets in atoms, and ultrafast quantum coherent control. These
`
`fields have flourished. In 2001, I became the director of a new National Science
`
`Foundation center at Michigan (FOCUS) devoted to research in ultrafast coherent
`
`control and related science. Quantum control is now considered one of the grand
`
`challenge problems in atomic physics and physical chemistry. I have recently
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`extended ultrafast techniques to still shorter wavelengths in order to investigate
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`ultrafast quantum processes more deeply.
`
`22.
`
`In 2006, I moved to Stanford University to establish and direct the
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`Stanford PULSE Institute, a research center that utilizes intense laser light sources,
`
`including the world’s first x-ray free-electron laser, the Linac Coherent Light
`
`Source (LCLS), located at Stanford’s SLAC National Accelerator laboratory.
`
`23.
`
`I have specific extensive experience in a number of areas that I
`
`believe to be relevant to the technology involved in this proceeding and to the
`
`issues that I have been asked to consider and comment upon as an expert in the
`
`field. These specific experience areas include the following:
`
`(i) My present research activity is primarily focused on a research
`
`center at Stanford University devoted to research using ultrafast laser-matter
`
`interactions.
`
`(ii)
`
`I have extensive experience with many types of different lasers,
`
`including those discussed by the Petitioners and Petitioners’ expert, Dr. Eden. I
`
`have designed, built, and/or used a number of laser-based or plasma-based light
`
`sources and systems, including: flashlamp-pumped dye lasers; continuous-wave
`
`(cw) tunable dye lasers; arc-lamp pumped cw Nd:YLF lasers; actively mode-
`
`locked and Q-switched flashlamp-pumped Nd:YAG and Nd:YLF lasers and
`
`amplifiers; mode-locked cw lasers; synchronously mode-locked and cavity-
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`dumped dye lasers and dye amplifiers; KrF excimer lasers and KrF excimer
`
`amplifiers; metal vapor electronic Raman lasers; laser systems for generating
`
`broadband terahertz half-cycle pulses; cw Ti:Sapphire oscillators; Kerr-lens mode-
`
`locked Ti:Sapphire oscillators; Ti:Sapphire chirped-pulse amplifiers; dispersion-
`
`compensated fiber transport systems for ultrafast pulses; optical parametric
`
`amplifiers; non-collinear optical parametric amplifiers; and high harmonics
`
`generators. I have been familiar with the science and technology of laser-plasma
`
`interactions for over 35 years. From 1975 to 1980, I designed, built, and used a
`
`succession of plasma flashlamp pumped tunable dye lasers, including work on the
`
`flashlamp plasma light sources and their coupling to the dye gain medium. In the
`
`1980’s, I worked at Bell Laboratories to design and build an extreme ultraviolet
`
`(XUV or EUV) light source based on amplification of laser radiation in an excimer
`
`plasma discharge, and then nonlinear excitation of a rare gas with the amplified
`
`ultraviolet light to make vacuum ultraviolet radiation. My colleagues and I later
`
`used this VUV lightsource to illuminate semiconductor wafers of silicon, gallium
`
`arsenide, and other semiconductors of potential interest to the micro-electronics
`
`community, to probe their properties. I pioneered, later in the 1980’s, the study of
`
`laser-matter ponderomotive forces in the strong-field low density regime. This
`
`involved direct measurements on the electrons in the plasma formed by the focused
`
`laser, and later I also studied light emission from these plasmas in the vacuum
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`ultraviolet. Recently I have further broadened my technical research to investigate
`
`different ways to produce VUV lightsources of unprecedented brightness and short
`
`pulse duration using nonlinear interactions in a dense gas irradiated by intense
`
`laser pulses.
`
`(iii)
`
` I am the Director of the Stanford PULSE Institute at Stanford
`
`University. The PULSE Institute is a jointly managed faculty research center at
`
`Stanford University and SLAC, devoted to expanding the science applications and
`
`opportunities of ultrafast short wavelength and high intensity light sources.
`
`PULSE research areas include atomic physics, physical chemistry, materials
`
`science, bioscience, and plasma physics.
`
`(iv)
`
`I was the founding Editor of the Virtual Journal of Ultrafast
`
`Science for the American Institute of Physics.
`
`(v)
`
`I have authored or co-authored: more than 400 scientific
`
`articles, including approximately 200 in peer-reviewed journals; four books; and
`
`six book chapters or sections. I have given over 370 lectures as a speaker at
`
`scientific conferences and meetings, and as an invited lecturer. A complete list of
`
`publications I have authored and invited lectures I have given is included in my
`
`curriculum vitae. (See Curriculum Vitae of Philip H. Bucksbaum (Ex. 2074).)
`
`(vi)
`
`I have taught courses in Physics and Applied Physics over the
`
`past twenty-five years, including courses in atomic physics, quantum control,
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`lasers, x-rays, nonlinear optics, and quantum optics. I have supervised the doctoral
`
`research of 34 graduate students who performed original research in these areas of
`
`physics, at Columbia University, the University of Michigan, and Stanford
`
`University.
`
`24. With a broad background in lasers and plasma physics and light
`
`sources, I believe that I am expert in this field and I am qualified to provide an
`
`accurate assessment of the technical issues in this proceeding.
`
`
`IV. MATERIALS REVIEWED
`25.
`
`In preparation of this declaration and in reaching my opinions
`
`presented in this report, I reviewed and considered the items identified in
`
`Appendix A attached to this report. My research for this report included
`
`reviewing the ’000 patent and its file history, the Petition submitted by Petitioners
`
`challenging claims in the ’000 patent, the Declaration submitted by Dr. Eden in
`
`support of the Petition challenging claims in the ’000 patent, the Institution
`
`Decision for the ’000 patent issued by the Board, the alleged prior art references
`
`cited therein, and third party publications. I have reviewed the ’841 patent and its
`
`file history, the Petition submitted by Petitioners challenging claims in the ’841
`
`patent, the Declaration submitted by Dr. Eden in support of the Petition
`
`challenging claims in the ’841 patent, the Institution Decision for the ’841 patent
`
`issued by the Board. I also attended the deposition of Dr. Eden held on the 27th
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`and 28th of January 2016. I may make reference to this deposition by citing to
`
`excerpts of a transcript of the deposition. I am also aware of the facts set out in the
`
`declaration of Dr. Don Smith (“Smith Declaration” (Ex. 2016).), which I
`
`understand is being submitted at the same time as my declaration, and the Exhibits
`
`cited and relied on therein. My opinions herein are also based on my education,
`
`training, research, knowledge, and my professional experience and expertise.
`
`26. While I have reviewed, analyzed and discussed herein, the documents
`
`identified in the Petitions, Declarations, and/or otherwise produced by Petitioners,
`
`this analysis should not be construed as an admission that any of these documents
`
`are applicable as prior art against any of the Energetiq patents discussed in this
`
`report. Whenever I opine below that a reference does not disclose a claim
`
`element, my opinion is that the reference fails to disclose the claim element both
`
`expressly and inherently.
`
`V.
`
`
`LEGAL STANDARDS
`27.
`
`I am not an attorney. Energetiq’s counsel has informed me about the
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`legal standards of patent validity. I understand that in this proceeding before the
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`Board, Petitioners, as the patent challenger, bear the burden of proving the
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`elements of patent invalidity by a preponderance of the evidence. I further
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`understand that, in this case, the grounds for institution include only allegations
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`that the challenged claims are obvious. I further understand that the scope of
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`issues that are to be considered in this inter partes review are limited to the
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`grounds disclosed in the Petition on which the Board has instituted review.
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`A. Obviousness
`28.
`I have been informed that a claimed invention is invalid if it is
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`obvious. I understand that a patent is obvious if the differences between the
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`claimed subject matter and the prior art are such that the subject matter as a whole
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`would have been obvious at the time the invention was made to a person having
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`ordinary skill in the art.
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`29. Energetiq’s counsel has informed me that obviousness is a question of
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`law based on underlying questions of fact. I understand that the underlying factual
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`inquiries in an obviousness analysis include: (1) determining the scope and content
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`of the prior art; (2) resolving the level of ordinary skill in the prior art; (3)
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`ascertaining the differences between the claimed invention and the prior art; and
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`(4) considering objective evidence of nonobviousness.
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`30.
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` With regard to determining the scope and content of the prior art, I
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`have been informed by Energetiq’s counsel that a reference qualifies as prior art
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`for an obviousness determination when the prior art reference is analogous to the
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`claimed invention. I understand that there are two tests that define the scope of
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`analogous prior art: (1) whether the art is from the same field of endeavor,
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`regardless of the problem addressed, or (2) if the reference is not within the field
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`of the inventor's endeavor, whether the reference is reasonably pertinent to the
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`particular problem with which the inventor is involved.
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`31.
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`I have been informed by Energetiq’s counsel that objective evidence
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`of nonobviousness can be considered in determining whether a patent claim is
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`obvious. I understand that such evidence may often be the most probative and
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`cogent evidence in the record, because such evidence may show that an invention
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`appearing to have been obvious in hindsight, was not obvious at the time. I
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`understand that such evidence can include:
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`
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`Long-Felt Need: Evidence that a claimed invention solved
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`longstanding problems or fulfilled a long-felt need in an
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`industry can be considered as an indication of nonobviousness.
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`
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`Industry Skepticism and Failure of Others: Evidence that
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`individuals in the industry were skeptical about how the
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`invention would work, or thought that it might have operational
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`problems, can be considered as an indication of
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`nonobviousness.
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`
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`
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`Commercial Success: Evidence of commercial success can be
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`considered as an indication of nonobviousness.
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`Industry Praise and Unexpected Results: Evidence that industry
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`members have praised the invention can be considered as an
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`indication of nonobviousness.
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`
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`
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`Copying: Evidence of copying of patent features by others can
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`be considered as an indication of nonobviousness.
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`Licensing: Evidence of acquiescence by a substantial portion of
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`competitors in a market to the validity of a patent, generally
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`through acceptance of a license, can be considered as an
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`indication of nonobviousness.
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`
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`Investment in Research and Development: Evidence of
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`investment in research and development can be considered as
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`an indication of nonobviousness.
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`32.
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`I understand that in order for objective evidence to be accorded
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`substantial weight in the determination of obviousness or nonobviousness, it must
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`be relevant to the subject matter as claimed, and, therefore, its proponent must
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`establish a nexus between the evidence and the merits of the claimed invention.
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`33.
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`I understand that a claim is not obvious if the combined references do
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`not show all of the elements of the claim. Furthermore, I understand that a patent
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`claim composed of several elements is not proved obvious merely by
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`demonstrating that each of its elements was, independently, known in the prior art.
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`34. Furthermore, a claim is not obvious if there is no suggestion or
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`motivation to combine the references or some other reason with a rational
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`underpinning to support the combination of references. I understand that the
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`patent challenger, Petitioner, has the burden to show that a person of ordinary skill
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`in the relevant field would have had a reason to combine the elements in the
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`manner claimed when asserting obviousness in view of a combination of
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`references. Energetiq’s co