`Trials@uspto.gov
`571-272-7822
`
`Date Entered: November 30, 2015
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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,
`Petitioner,
`v.
`ENERGETIQ TECHNOLOGY, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01368
`Patent 8,525,138 B2
`____________
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`Petitioner, ASML Netherlands B.V., Excelitas Technologies Corp.,
`
`and Qioptiq Photonics GmbH & Co. KG, filed a Petition requesting an inter
`partes review of claims 1–5 of U.S. Patent No. 8,525,138 B2 (Ex. 1001, “the
`’138 patent”). Paper 4 (“Pet.”). Patent Owner, Energetiq Technology, Inc.
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`did not file a Preliminary Response. We have jurisdiction under 35 U.S.C.
`§ 314, which provides that an inter partes review may not be instituted
`“unless . . . the information presented in the petition . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.”
`For the reasons that follow, we institute an inter partes review of
`
`claims 1–5 of the ’138 patent.
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`A. Related Proceeding
`
`The ’138 patent is involved in the following lawsuit: Energetiq Tech.,
`Inc. v. ASML Netherlands B.V., et al., No. 1:15-cv-10240-LTS (D. Mass.).
`Pet. 1.
`
`B. The ’138 Patent
`The ’138 patent relates to a method and apparatus for producing light.
`Ex. 1001, Abstract. The apparatus includes a chamber and an ignition
`source that ionizes a gas within the chamber. Id. A laser provides energy to
`the ionized gas within the chamber to produce a high brightness light. Id.
`The laser may be tuned to a wavelength near a strong absorption line of the
`excited gas within the chamber. Id. at 34:8–30. The laser can provide a
`substantially continuous amount of energy to the ionized gas to generate a
`substantially continuous high brightness light. Id. at Abstract.
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`C. Illustrative Claim
`Claims 2–5 directly depend from claim 1. Claim 1 is reproduced
`below.
`1. A light source comprising:
`
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`a pressurized chamber having a gas disposed therein;
`
`an ignition source comprising electrodes for exciting the
`gas, the excited gas having at least one strong absorption line at
`an infrared wavelength;
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`at least one laser configured to provide energy to the
`excited gas at a wavelength within 10 nm of a strong absorption
`line of the excited gas within the chamber to sustain a plasma
`and produce at least substantially continuous, plasma-generated
`light.
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`Ex. 1001, 48:36–45.
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–5 are unpatentable based on the
`following grounds:
`References
`Gärtner1 and Beterov2
`Gärtner and Wolfram3
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`Basis
`§ 103(a)
`§ 103(a)
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`Challenged Claims
`1–5
`1–5
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`II. ANALYSIS
`A. Claim Interpretation
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
`Speed Techs., LLC, 793 F.3d 1268, 1277–1279 (Fed. Cir. 2015) (“Congress
`implicitly approved the broadest reasonable interpretation standard in
`enacting the AIA,”4 and “the standard was properly adopted by PTO
`regulation.”). Under the broadest reasonable construction standard, claim
`terms are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
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`1 French Patent Publication No. FR2554302A1, published May 3, 1985
`(Ex. 1004) (“Gärtner”).
`2 I.M. Beterov et al., Resonance Radiation Plasma (Photoresonance
`Plasma), SOV. PHYS. USP. 31(6), 535 (1988) (Ex. 1006) (“Beterov”).
`3 U.S. Patent No. 4,901,330, issued Feb. 13, 1990 (Ex. 1017) (“Wolfram”).
`4 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”).
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`Petitioner proposes a construction for the claim term “light source”
`recited in all of the challenged claims. Pet. 11–13.
`We have reviewed Petitioner’s proposed construction and determine
`that it is consistent with the broadest reasonable construction. For purposes
`of this Decision, we construe “light source” to mean “a source of
`electromagnetic radiation in the ultraviolet (“UV”), extreme UV, vacuum
`UV, visible, near infrared, middle infrared, or far infrared regions of the
`spectrum, having wavelengths within the range of 10 nm to 1,000 µm.”
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`B. Principles of Law
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see
`Translogic, 504 F.3d at 1259. A prima facie case of obviousness is
`established when the prior art itself would appear to have suggested the
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`claimed subject matter to a person of ordinary skill in the art. In re Rinehart,
`531 F.2d 1048, 1051 (CCPA 1976).
`The level of ordinary skill in the art is reflected by the prior art of
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
`579 F.2d 86, 91 (CCPA 1978).
`C. Obviousness of Claims 1–5 over Gärtner and Beterov
`Petitioner contends that claims 1–5 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Gärtner and Beterov. Pet. 21–44. To support its
`contentions, Petitioner provides detailed explanations as to how Gärtner and
`Beterov meet each limitation of claims 1–5. Id. Petitioner also relies upon a
`Declaration of Dr. J. Gary Eden, who has been retained as an expert witness
`by Petitioner for the instant proceeding. Ex. 1003.
`Gärtner describes a radiation source for optical devices, in particular
`for photolithographic reproduction systems. Ex. 1004, 1. Figure 1,
`reproduced below, shows an embodiment of the radiation source.
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`Figure 1 of Gärtner shows an embodiment of a radiation source.
`Figure 1 of Gärtner describes a gas-tight chamber 1 that contains a
`discharge medium 2. Id. at 4. The discharge medium may be argon or
`xenon with a working pressure of 106 Pa. Id. at 5. Entry aperture 3 is sealed
`by window 6 which allows infrared to pass, entry aperture 4 is sealed by lens
`7 which allows ultraviolet to pass, and exit aperture 5 is provided with a
`window 8. Id. at 4–5. The radiation source includes two lasers 9 and 10
`outside chamber 1. Laser 9 is described as a stationary CO2 gas laser, and
`laser 10 is described as a nitrogen pulse laser. Id. at 5. Radiation 11 from
`laser 9 penetrates into chamber 1 through window 6 and is focused by
`concave mirror 12. Id. Radiation from laser 10 is focused by lens 7 which
`allows ultraviolet to pass and produces an electrical discharge, and as a
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`result, an absorbent plasma 14 is heated to high temperatures under the
`influence of radiation 11. The radiation from the plasma can be fed into the
`downstream optical system through window 8. Id. Gärtner describes that an
`ignition source may include electrodes for exciting the gas. Id. at 1:22.
`The present record supports the contention that Gärtner describes a
`light source. Pet. 30; Ex. 1004, 1:1–4, Figs. 1–4; Ex. 1003 ¶ 74. The
`present record also supports the contention that Gärtner describes a
`pressurized chamber having a gas disposed therein. Pet. 30–31; Ex. 1004,
`3:20, 4:32, 5:15–16; Ex. 1003 ¶ 75. The present record supports the
`contention that the chamber contains an ignition source, such as electrodes,
`and a gas that has at least one strong absorption line (xenon gas). Pet. 31–
`32; Ex. 1004, 1:22, 5:14–16; Ex. 1003 ¶¶ 76–78. The present record also
`supports Petitioner’s contention that Gärtner describes providing laser
`energy (with laser 9) to the ionized gas in the chamber to produce a plasma
`that generates a continuous plasma generated light. Pet. 32–33; Ex. 1004,
`3:22–24, 5:10; Ex. 1003 ¶ 80.
`Petitioner relies on Gärtner for at least its description of a laser
`configured to provide a continuous plasma, but acknowledges that Gärtner
`does not describe that the laser provides energy to the excited gas at a
`wavelength within 10 nm of a strong absorption line of the excited gas as
`claimed in claim 1. See, e.g., Pet. 32–33. For this feature, Petitioner relies
`on Beterov. Id.
`Beterov is a technical article describing the formation of
`photoresonance plasmas. Ex. 1006, 535. Beterov describes one type of
`formed plasma as a “quasiresonance laser plasma.” Id. at 539. In one
`example, Beterov describes forming a quasiresonance plasma by irradiating,
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`for example a sodium (Na) vapor, with a laser tuned in resonance with the
`3p-4d transition (λ=568.8 or 568.2 nm) of the Na atom. Id. at 540; Fig. 10.
`The present record supports Petitioner’s contention that a person having
`ordinary skill in the art at the time of the invention would have understood
`that the absorption line based on the 3p-4d transition is a strong absorption
`line with respect to Na, and that, therefore, the laser is tuned at a wavelength
`of a strong absorption line of the excited gas. Pet. 17, 29–30; Ex. 1003,
`¶¶ 48, 49, 72. The present record supports Petitioner’s contention that
`Beterov describes detuning (and tuning) by 0.0024 nm from (to) a strong
`absorption line, which also meets the limitation of a laser configured to
`provide energy to the excited gas at a wavelength within 10 nm of a strong
`absorption line of the excited gas. Pet. 34; Ex. 1006, 539; Ex. 1003 ¶ 83.
`The present record also supports Petitioner’s conclusion that it would have
`been obvious to modify Gärtner with Beterov. Pet. 34–41. For example, the
`Petition explains that it would have been obvious at the time of the invention
`to tune the laser such that it provides energy to the excited gas at a
`wavelength within 10 nm of a strong absorption line of the excited gas
`within the chamber to increase efficiency and the brightness of light
`produced by the plasma. Pet. 35; Ex. 1003 ¶ 85. Based on the record before
`us, Petitioner has articulated reasoning with rational underpinnings on why a
`person of ordinary skill in the art at the time of the invention would have
`combined Gärtner and Beterov.
`Petitioner also asserts that dependent claims 2–5 would have been
`obvious over Gärtner and Beterov. Pet. 41–43. Claim 2 recites “wherein the
`gas comprises a noble gas” and claim 3, which depends directly from claim
`1 recites “wherein the gas comprises xenon.” Ex. 1001, 48:46–49. The
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`present record supports Petitioner’s contention that Gärtner describes a
`chamber containing a noble gas as the discharge medium, such as argon or
`xenon. Pet. 42; Ex. 1004, 5:15–16; Ex. 1003 ¶¶ 98, 99. Claim 4, which
`depends directly from claim 1 recites “wherein the excited gas comprises
`atoms at a lowest excited state.” Ex. 1001, 48:50–51. Petitioner accounts
`for this limitation by explaining for example, with supporting evidence, that
`because a plasma is produced, there will inherently be atoms in the plasma
`in various excited states, including atoms residing in the lowest excited state.
`Pet. 42–43; Ex. 1003 ¶ 101. Claim 5 depends directly from claim 1 and
`recites “wherein the gas is absorptive near the wavelength of the at least one
`laser.” Petitioner accounts for this limitation by explaining that Gärtner
`describes the production and maintenance of a radiation-emitting plasma
`which is achieved by the gas absorbing energy supplied by the laser, which
`energy is provided at a certain wavelength. Pet. 43; Ex. 1003 ¶ 102.
`We have reviewed the asserted ground of obviousness over Gärtner
`and Beterov against claims 1–5, and we are persuaded, at this juncture of the
`proceeding, that Petitioner has established a reasonable likelihood that
`Petitioner would prevail in its challenge to claims 1–5 on this ground.
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`D. Remaining Grounds Challenging the Claims of the ’245 Patent
`Pursuant to 35 U.S.C. § 316(b), rules for inter partes proceedings
`were promulgated to take into account the “regulation on the economy, the
`integrity of the patent system, the efficient administration of the Office, and
`the ability of the Office to timely complete proceedings.” The promulgated
`rules provide that they are to “be construed to secure the just, speedy, and
`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). As a
`result, and in determining whether to institute an inter partes review of a
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`patent, the Board, in its discretion, may “deny some or all grounds for
`unpatentability for some or all of the challenged claims.” 37 C.F.R.
`§ 42.108(b).
`We exercise our discretion and decline to institute review based on the
`other asserted ground advanced by Petitioner that is not identified below as
`being part of the trial. 37 C.F.R. § 42.108(a).
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`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented establishes a reasonable likelihood that Petitioner would prevail in
`showing that claims 1–5 of the ’138 patent are unpatentable. At this stage of
`the proceeding, the Board has not made a final determination with respect to
`the patentability of the challenged claims.
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`IV. ORDER
`For the foregoing reasons, it is
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted on the ground that claims 1–5 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Gärtner and Beterov;
`FURTHER ORDERED that no other ground of unpatentability
`asserted in the Petition is authorized for this inter partes review; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`will commence on the entry date of this decision.
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`PETITIONER:
`
`Donald R. Steinberg
`David L. Cavanaugh
`Michael H. Smith
`Wilmer Cutler Pickering Hale & Dorr LLP
`Don.Steinberg@wilmerhale.com
`David.Cavanaugh@wilmerhale.com
`MichaelH.Smith@wilmerhale.com
`
`PATENT OWNER:
`
`Steven M. Bauer
`Joseph A. Capraro Jr.
`Proskauer Rose LLP
`PTABMattersBoston@proskauer.com
`JCapraro@proskauer.com
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