throbber
Trials@uspto.gov
`571-272-7822
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` Paper 13
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` 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 IPR2015-01375
`Patent 9,048,000 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

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`IPR2015-01375
`Patent 9,048,000 B2
`
`
`
`I.
`
`INTRODUCTION
`
`ASML Netherlands B.V., Excelitas Technologies Corp., and Qioptiq
`
`Photonics GmbH & Co. KG (collectively, “Petitioner”) filed a Petition
`
`requesting an inter partes review of claims 1, 15, and 18 of U.S. Patent
`
`No. 9,048,000 B2 (Ex. 1001, “the ’000 patent”). Paper 4 (“Pet.”). Energetiq
`
`Technology, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 10
`
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a).
`
`For the reasons set forth below, we institute an inter partes review as
`
`to claims 1, 15, and 18 of the ’000 patent.
`
`A. Related Matter
`
`The parties indicate that the ’000 patent is asserted in Energetiq
`
`Technology, Inc. v. ASML Netherlands B.V., No. 1:15-cv-10240-LTS
`
`(D. Mass.), and identify related proceedings. Pet. 1; Paper 11, 2–3.
`
`B. The ’000 Patent
`
`The ’000 patent claims under 35 U.S.C. § 120, through a series of
`
`continuation and continuation-in-part applications, the benefit of the filing
`
`date of an application filed March 31, 2006. Ex. 1001, at [63]; Ex. 1002.
`
`The ’000 patent discloses a light source comprising a laser that ionizes a gas
`
`within a chamber to produce a plasma-generated light. Id. at Abs.
`
`According to the ’000 patent, such a light source can be used as a source of
`
`illumination in a semiconductor photolithographic system. Id. at 1:27–37.
`
`2
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`IPR2015-01375
`Patent 9,048,000 B2
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`Figure 1 of the ’000 patent illustrates a block diagram of a light
`
`source, and is reproduced below with annotations added.
`
`
`
`As shown in annotated Figure 1, light source 100 includes laser 104,
`
`chamber 128, and ignition source 140. Id. at 14:40–16:5. Laser 104 outputs
`
`laser beam 116 via fiber optic element 108. Id. Collimator 112 directs the
`
`laser beam to beam expander 118, which produces laser beam 122 and
`
`directs it to optical lens 120. Id. Optical lens 120 focuses the beam to
`
`produce smaller diameter laser beam 124 and directs it to region 130, where
`
`plasma 132 is generated along with emitting light 136. Id.
`
`C. Illustrative Claim
`
`Claims 1 and 15 are independent, and claim 18 depends directly from
`
`claim 1, which is reproduced below.
`
`1. A method for illuminating features of a semiconductor wafer,
`comprising:
`
`ionizing a gas within a sealed pressurized plasma chamber
`having an operating pressure of at least 10 atmospheres;
`
`providing substantially continuous laser energy having a
`
`3
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`IPR2015-01375
`Patent 9,048,000 B2
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`wavelength range of up to about 2000 nm through a region of
`material of the sealed pressurized chamber that is transparent to
`the substantially continuous laser energy to the ionized gas to
`sustain a plasma within the sealed pressurized plasma chamber
`to produce plasma generated light having wavelengths greater
`than 50 nm; and
`
`illuminating the wafer with plasma-generated light having
`wavelengths greater than 50 nm that exits the sealed pressurized
`chamber.
`
`Ex. 1001, 48:45–59 (emphases added).
`
`D. Prior Art Relied Upon
`
`
`
`Petitioner relies upon the following prior art references1:
`
`Gärtner
`Kensuke
`Mourou
`
`May 3, 1985
` FR 2554302 A1
`Jan. 12, 2006
` JP 2006010675 A
` WO 2004/097520 A2 Nov. 11, 2004
`
`(Ex. 1004)
`(Ex. 1005)
`(Ex. 1014)
`
`WILLIAM T. SILFVAST, LASER FUNDAMENTALS 1–6, 199–222, 565–68
`(2d ed. 2004). Ex. 1006 (“Silfvast”).
`
`
`
`1 The citations to Gärtner and Kensuke in this Decision are to their certified
`English-language translations in Exhibits 1004 and 1005, respectively.
`
`4
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`IPR2015-01375
`Patent 9,048,000 B2
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`E. Asserted Grounds of Unpatentability
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`Petitioner asserts the following grounds (Pet. 18, 42):
`
`Claims
`
`Basis
`
`References
`
`1, 15, and 18
`
`§ 103(a)
`
`Gärtner in view of Mourou and Silfvast2
`
`1, 15, and 18
`
`§ 103(a)
`
`Gärtner in view of Kensuke and Silfvast
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`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); In re Cuozzo Speed
`
`Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015). Here, Petitioner
`
`proposes construction for “light,” which is recited in all of the challenged
`
`claims. Pet. 8–11. At this juncture, Patent Owner does not challenge
`
`Petitioner’s proposed construction. See generally Prelim. Resp.
`
`Upon review of the present record, we determine that Petitioner’s
`
`construction is consistent with the broadest reasonable construction. For
`
`purposes of this Decision, we adopt the following claim construction:
`
`
`
`2 Silfvast is omitted inadvertently from each statement of the asserted
`grounds, although discussed in the Petitioner’s analysis. Pet. 14–18, 26–39,
`45–54. Therefore, we treat the statements of the asserted grounds as mere
`harmless error and presume that Petitioner intended to assert that the
`challenged claims are unpatentable based, in part, on Silfvast.
`5
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`Claim Term
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`Construction
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`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
`
`light
`
`
`
`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
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`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
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`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`C. Obviousness
`
`Petitioner asserts that claims 1, 15, and 18 are unpatentable under
`
`§ 103(a) 3 as obvious over Gärtner in view of Mourou and Silfvast, and as
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`obvious over Gärtner in view of Kensuke and Silfvast. Pet. 18–60. As
`
`
`
`3 Because, on this record, the effective filing date for the ’000 patent is
`before March 16, 2013, the pre-Leahy-Smith America Invents Act, Pub. L.
`No. 112-29, 125 Stat. 284 (2011), version of § 103 applies.
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`support, Petitioner proffers a Declaration of Dr. J. Gary Eden, who has been
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`retained as an expert witness for the instant proceeding. Ex. 1003 ¶¶ 19–20.
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`Patent Owner counters that neither prior art combination renders
`
`claims 1, 15, and 18 obvious. Prelim. Resp. 10–56. In particular, Patent
`
`Owner argues that the combinations do not disclose “an operating pressure
`
`of at least 10 atmospheres,” and “laser energy having a wavelength range of
`
`up to about 2000 nm.” Id. Patent Owner also alleges that Petitioner fails to
`
`provide sufficient reasons to combine the prior art teachings. Id.
`
`In our discussion below, we begin with a brief summary of the cited
`
`prior art and then we address the parties’ contentions in turn, focusing on the
`
`deficiencies alleged by Patent Owner.
`
`1. Brief Summary of the Cited Prior Art
`
`Gärtner
`
`Gärtner discloses a radiation light source for a photolithographic
`
`system, illuminating a photoresist layer on a semiconductor wafer.
`
`Ex. 1004, 1:1–4. Figure 1 of Gärtner is reproduced below with annotations
`
`added.
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`As shown in annotated Figure 1 of Gärtner, Gärtner’s light source
`
`includes continuous CO2 laser 9, laser 10 (an ignition source), and
`
`chamber 1. Id. at 4:31–5:12. Plasma 14 is generated inside chamber 1 and
`
`emits light 15 into a downstream optical system through window 8. Id.
`
`
`
`Mourou
`
`Mourou discloses a light source for semiconductor photolithography.
`
`Ex. 1014 ¶ 1. Mourou’s light source includes a titanium sapphire laser for
`
`providing energy with a wavelength of 800 nm. Id. ¶ 22.
`
`Kensuke
`
`Kensuke discloses a light source that provides a continuous spectrum
`
`in the UV range. Ex. 1005, Abs. Kensuke’s light source includes a titanium
`
`sapphire laser that generates energy having a wavelength range of about 500
`
`to 1,100 nm. Id. ¶ 14.
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`Silfvast
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`Silfvast is a book on laser fundamentals. Ex. 1006, 1. Silfvast states
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`that titanium sapphire lasers “can be operated over a wavelength range of
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`660–1,180 nm and thus has the broadest gain bandwidth of any laser.” Id. at
`
`565. According to Silfvast, “[c]ommercial titanium sapphire lasers are . . .
`
`typically pumped with either argon ion lasers (for [continuous wave]
`
`operation) or frequency-doubled Nd:YAG or Nd:YLF lasers (for pulsed
`
`operation).” Id.
`
`Pressure of 10 atmospheres or greater
`
`2. Discussion
`
`Claim 1 recites “a sealed pressurized plasma chamber having an
`
`operating pressure of at least 10 atmospheres.” Ex. 1001, 48:47–48.
`
`Claims 15 and 18 each recite “the pressure of the plasma chamber during
`
`operation is greater than 10 atmospheres.” Id. at 49:48–49, 50:11–13.
`
`Petitioner takes the position that Gärtner in combination with Mourou
`
`and Silfvast, or with Kensuke and Silfvast, renders these limitations obvious.
`
`Pet. 23–26, 44. As support, Petitioner directs our attention to Gärtner’s
`
`disclosure of a gas-tight chamber containing a discharge medium, and an
`
`example in which an argon or xenon is the “active medium with a working
`
`pressure of 106 Pa.” Id. at 24 (citing Ex. 1004, 4:32, 5:15–16, Fig. 1).
`
`Patent Owner counters that “Gärtner fails to disclose an operating
`
`pressure of at least 10 atmospheres.” Prelim. Resp. 10–12. In particular,
`
`Patent Owner argues that Gärtner’s example describes a “pressure of 106 Pa,
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`which is about 9.869 atm (at 1 Pascal = 0.00000986923267 atm) and
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`therefore fails to fall with the claimed range.” Id. at 10–11.
`
`A pressure of 106 Pascal is equivalent to 10 atmospheres, however, if
`
`the number is rounded mathematically to a whole number. Gärtner discloses
`
`a specific pressure as a whole number. The Specification of the ’000 patent
`
`also discloses the pressure ranges in whole numbers—e.g., “the chamber . . .
`
`sustaining pressures between 10 to about 200 atmospheres”—and each of
`
`the claimed ranges is recited in whole numbers. Ex. 1001, 17:9–11, 48:45–
`
`46. On this record, we discern no meaningful difference between 106 Pascal
`
`and 10 atmospheres in the context of the ’000 patent. Thus, we determine
`
`that Petitioner has demonstrated sufficiently, for purposes of this Decision,
`
`that Gärtner discloses “a sealed pressurized plasma chamber having an
`
`operating pressure of at least 10 atmospheres,” as recited in claim 1.
`
`Patent Owner further argues that Gärtner “merely describes the
`
`phenomena by which temperature, pressure, and electromagnetic radiation
`
`can depend on one another in a particular system,” and it does not disclose
`
`or suggest the claimed ranges. Prelim. Resp. 11–12. It is well-established,
`
`however, that “discovery of an optimum value of a result effective variable
`
`in a known process is ordinarily within the skill of the art.” In re Boesch,
`
`617 F.2d 272, 276 (CCPA 1980); In re Antonie, 559 F.2d 618, 620 (CCPA
`
`1977). “A recognition in the prior art that a property is affected by the
`
`variable is sufficient to find the variable result effective.” In re Applied
`
`Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012).
`
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`Here, immediately after teaching a specific example of using an argon
`
`or xenon atmosphere with a pressure of 106 Pa, Gärtner discloses that “[t]he
`
`optical depth . . . can be varied with a vast range by altering the pressure,”
`
`and “[a]s the pressure increases, . . . the spectral distribution approaches
`
`Planck’s function.” Ex. 1004, 5:15–19 (emphases added). Dr. Eden testifies
`
`that any light source emitting light having a spectrum that obeys Planck’s
`
`function is known as a “blackbody” source—“an optical source that loses
`
`(emits) as much energy as it absorbs.” Ex. 1003 ¶ 67. Dr. Eden further
`
`explains that, in such a light source, “[i]ncreasing the pressure results in the
`
`light source absorbing more power, and emitting more power.” Id.
`
`According to Dr. Eden, an ordinarily skilled artisan would have recognized
`
`that increasing the pressure inside the plasma chamber of a light source will
`
`increase the brightness of the plasma-generated light.4 Ex. 1003 ¶¶ 66–67;
`
`Ex. 1004, 5:16–19. In short, the pressure within the plasma chamber of a
`
`light source is a result effective variable.
`
`Moreover, Dr. Eden testifies that “it would have been obvious to use
`
`Gärtner’s teaching of varying the pressure and/or the knowledge of a person
`
`of skill in the art to increase the pressure to above 10 atmospheres,” because
`
`sustaining plasmas in chambers with such a pressure was a matter of routine
`
`
`
`4 Petitioner asserts that one with ordinary skill in the art would have had a
`Ph.D. in physics, electrical engineering, or an equivalent field, and 2–4 years
`of work experience with lasers and plasma, or a master’s degree in physics,
`electrical engineering, or an equivalent field, and 4–5 years of work
`experience with lasers and plasma. Pet. 3; Ex. 1003 ¶ 23. At this juncture,
`Patent Owner does not challenge this assertion. See generally Prelim. Resp.
`11
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`skill. Ex. 1003 ¶ 68, citing Ex. 1017, 177 (“laser-sustained plasmas have
`
`been operated in a variety of molecular and rare gases at pressures from 1 to
`
`more than 200 atm.”).5 We credit Dr. Eden’s testimony as it is supported by
`
`other evidence in this record. At this juncture, Patent Owner does not allege
`
`that the claimed ranges are critical or “produce a new and unexpected result
`
`which is different in kind and not merely in degree from the results of the
`
`prior art.” In re Aller, 220 F.2d 454, 456 (CCPA 1955).
`
`For the foregoing reasons, we determine that Petitioner has
`
`demonstrated sufficiently, for purposes of this Decision, that a combination
`
`based, in part, on Gärtner teaches or suggests a plasma chamber having a
`
`pressure of greater than 10 atmospheres, as recited in claims 15 and 18.
`
`Laser energy having a wavelength of up to about 2000 nm
`
`Claim 1 recites “providing substantially continuous laser energy
`
`having a wavelength range of up to about 2000 nm . . . to produce a
`
`plasma-generated light having wavelengths greater than 50 nm.” Ex. 1001,
`
`48:49–55. By virtue of its dependency, claim 18 also requires this
`
`limitation. Id. at 50:12–14. Independent claim 15 recites a similar
`
`limitation, but does not require the laser energy to be “substantially
`
`continuous.” Id. at 49:50–50:3.
`
`Petitioner asserts that Gärtner in view of Mourou and Silfvast, or in
`
`view of Kensuke and Silfvast, renders the aforementioned limitation
`
`
`
`5 Dennis R. Keefer, Laser-Sustained Plasma, in LASER-INDUCED PLASMAS
`AND APPLICATIONS 169–206 (Leon J. Radziemski & David A. Cremers eds.,
`1989). Ex. 1017 (“Keefer”).
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`obvious. Pet. 26–28, 44–46. In particular, Petitioner alleges that Gärtner
`
`discloses a light source comprising a continuous CO2 laser for ionizing a gas
`
`within a chamber to sustain a plasma, which produces a UV light having
`
`wavelengths greater than 50 nm. Id.; Ex. 1004, 4:31–5:12. Petitioner
`
`acknowledges that Gärtner does not disclose a “laser energy having a
`
`wavelength range of up to above 2000 nm,” as recited in claims 1 and 15.
`
`Pet. 28, 46–47. Nevertheless, Petitioner contends that lasers having energy
`
`with shorter wavelengths were well-known in the art because Mourou,
`
`Kensuke, and Silfvast each disclose a titanium sapphire laser that generates
`
`energy having a wavelength, or a range, falling squarely within the claimed
`
`range. Id. at 26–39, 44–54; Ex. 1005 ¶ 14 (500 to 1,100 nm); Ex. 1006,
`
`565–66 (660–1,180 nm); Ex. 1014 ¶ 22 (800 nm). Petitioner further
`
`maintains that it would have been obvious to substitute a titanium sapphire
`
`laser for Gärtner’s continuous CO2 laser, in view of Mourou and Silfvast, or
`
`in view of Kensuke and Silfvast. Pet. at 26–39, 44–54.
`
`Patent Owner disagrees and advances two arguments. Prelim. Resp.
`
`12–42, 43–56. First, Patent Owner argues that neither Mourou nor Kensuke
`
`discloses a continuous laser or a laser that provides substantially continuous
`
`energy. Id. at 9, 22–26, 42, 44–46.
`
`It was known in the art at the time of the invention, however, that
`
`“[c]ommercial titanium sapphire lasers are . . . typically pumped with either
`
`argon ion laser (for [continuous wave] operation) or frequency-doubled
`
`Nd:YAG or ND:YLF lasers (for pulsed operation),” as described by Silfvast.
`
`Ex. 1006, 565–66 (emphasis added). Therefore, one with ordinary skill in
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`the art would have understood that a titanium sapphire laser having a
`
`continuous wave operation (hereafter “a continuous titanium sapphire laser”)
`
`was commercially available at the time of the invention. Dr. Eden testifies
`
`that such an artisan would have utilized a continuous titanium sapphire laser
`
`in Gärtner’s light source “to achieve a 100% duty cycle which, in turn,
`
`provides uninterrupted power to the plasma light source,” so that “the
`
`plasma would provide a continuous output of light,” which is desirable for
`
`semiconductor photolithography. Ex. 1003 ¶¶ 74, 108. On this record, we
`
`credit Dr. Eden’s testimony as it is consistent with the prior art of record.
`
`Second, Patent Owner argues that the prior art combinations would
`
`not generate a light having wavelengths greater than 50 nm. Prelim. Resp.
`
`12–26, 42–46. In particular, Patent Owner contends that substituting
`
`Gärtner’s CO2 laser with a titanium sapphire laser would change Gärtner’s
`
`principle of operation and require undue experimentation, completely
`
`redesigning Gärtner’s system. Id. at 16–18, 42–46 (citing In re Ratti, 270
`
`F.2d 810, 813 (CCPA 1959)). Patent Owner also alleges that Mourou’s laser
`
`generates extreme UV light in water droplets, and it would have been too hot
`
`and provide too much power to sustain the extreme UV light. Id. at 13–22.
`
`Patent Owner’s contentions, however, are premised on the notion that
`
`the prior art combinations would have required reconfiguring Gärtner’s
`
`continuous CO2 laser to a pulsed titanium sapphire laser, and then
`
`reconfiguring the pulsed laser to a continuous laser. Id. at 16–18, 42–46.
`
`As discussed above, continuous titanium sapphire lasers were commercially
`
`available at the time of the invention. Ex. 1006, 565. Patent Owner does not
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`provide sufficient or credible evidence that a simple substitution of a
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`continuous titanium sapphire laser for Gärtner’s continuous CO2 laser would
`
`be “uniquely challenging or difficult for one of ordinary skill in the art.” See
`
`Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
`
`Cir. 2007).
`
`Patent Owner also fails to consider the prior art in the context of the
`
`knowledge that a person of ordinary skill in the art would have had with
`
`respect to light sources. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed.
`
`Cir. 2013). The level of ordinary skill in the art is reflected by the prior art
`
`of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`Here, Mourou illustrates that it was already known in the art to utilize a
`
`titanium sapphire laser in a light source to produce a plasma-generated light
`
`for semiconductor photolithography. Ex. 1014 ¶¶ 1, 9, 22. Gärtner teaches
`
`that a desired wavelength range for such a light is in the UV region—
`
`wavelengths greater than 50 nm. Ex. 1004, 2:28–30, 3:1–18, 4:34–5:1.
`
`Moreover, Dr. Eden testifies that an ordinarily skilled artisan would have
`
`understood that “laser sustained plasma produces light with a broad
`
`spectrum of wavelengths, with the peak of the spectrum depending on the
`
`power of the laser,” and such an artisan would have adjusted the power to
`
`maintain Gärtner’s desired UV wavelength. Ex. 1003 ¶ 75. In fact, Silfvast
`
`states that titanium sapphire lasers are the most widely used tunable
`
`solid-state lasers. Ex. 1006, 565. And Kensuke discloses a light source
`
`having a titanium sapphire laser to ionize a gas for generating a UV light
`
`(Ex. 1005 ¶¶ 2–3, 14), showing that it is not beyond the skill of an artisan to
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`utilize a titanium sapphire laser in a light source to produce a UV
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`plasma-generated light. See KSR, 550 U.S. at 417 (“[I]f a technique has
`
`been used to improve one device, and a person of ordinary skill in the art
`
`would recognize that it would improve similar devices in the same way,
`
`using the technique is obvious unless its actual application is beyond his or
`
`her skill.”); see also id. at 420 (“The second error of the Court of Appeals
`
`lay in its assumption that a person of ordinary skill attempting to solve a
`
`problem will be led only to those elements of prior art designed to solve the
`
`same problem.”).
`
`Patent Owner’s reliance on Ratti is misplaced here. Gärtner’s
`
`principle of operation is utilizing a laser to ionize a gas within a chamber for
`
`sustaining a plasma to produce a light. Ex. 1004, 4:31–5:12. Patent Owner
`
`does not provide sufficient or credible evidence that substituting a
`
`continuous titanium sapphire laser for Gärtner’s continuous CO2 laser would
`
`change that principle of operation. Indeed, Gärtner’s light source, as
`
`modified, would have operated on the same principle as before, producing a
`
`plasma-generated light using a continuous laser to ionize the gas in a
`
`chamber. See In re Umbarger, 407 F.2d 425, 430–31 (CCPA 1969) (finding
`
`Ratti inapplicable where the modified apparatus will operate “on the same
`
`principles as before”).
`
`We also are not persuaded by Patent Owner’s argument that Mourou
`
`discloses using a titanium sapphire laser to produce an extreme UV light, and
`
`not a UV light (Prelim. Resp. 12–22). Patent Owner attempts to limit
`
`Mourou’s teachings narrowly to the particular examples disclosed in the
`
`16
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`IPR2015-01375
`Patent 9,048,000 B2
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`
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`reference. In an obviousness analysis, a reference may be relied upon for all
`
`that it would have suggested reasonably to one having ordinary skill in the
`
`art. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
`
`1989). The disclosure of a reference is not limited to the specific examples
`
`contained in its disclosure. In re Mills, 470 F.2d 649, 651 (CCPA 1972).
`
`Based on the evidence before us, we determine that Petitioner has
`
`demonstrated sufficiently, for purposes of this Decision, that Gärtner in view
`
`of Mourou and Silfvast, or in view of Kensuke and Silfvast, discloses
`
`“providing substantially continuous laser energy having a wavelength range
`
`of up to about 2000 nm . . . to produce a plasma-generated light having
`
`wavelengths greater than 50 nm,” as required by claims 1, 15, and 18.
`
`Rationale to combine the prior art teachings
`
`Patent Owner contends that Petitioner fails to articulate sufficient
`
`reasons to combine Gärtner with Mourou and Silfvast, and to combine
`
`Gärtner with Kensuke and Silfvast. Prelim. Resp. 12–56. Patent Owner also
`
`takes the position that the prior art in this record teaches away from
`
`replacing Gärtner’s continuous CO2 laser with a shorter wavelength laser,
`
`such as those disclosed in Mourou, Kensuke, and Silfvast. Id. at 26–42, 46–
`
`48. To substantiate its contentions, Patent Owner alleges that Cross6,
`
`
`
`6 U.S. Patent No. 4,780,608, issued Oct. 25, 1988. Ex. 1015 (“Cross”).
`
`17
`
`

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`IPR2015-01375
`Patent 9,048,000 B2
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`
`
`Keefer, and Cremers7 would have discouraged an artisan from using shorter
`
`wavelength lasers. Id.
`
`In an obviousness analysis, prior art must be read in context, taking
`
`account of the knowledge possessed by one with ordinary skill in the art at
`
`the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1259–
`
`1262 (Fed. Cir. 2007). Here, the earliest filing date claimed by the ’000
`
`patent is March 31, 2006. Ex. 1001 at [63]. Yet, Patent Owner relies upon
`
`Cross, Keefer, and Cremers, which were published in 1988, 1989, and 1985,
`
`respectively. Those references, at best, show merely the knowledge of an
`
`artisan in the 1980s. Such evidence does not support Patent Owner’s
`
`contentions, as it does not account for the technological advancements in the
`
`relevant art between 1989 and 2006.
`
`As Petitioner points out, laser technology for shorter wavelengths
`
`improved significantly during the 1990s and early 2000s because of the
`
`development of the titanium-doped sapphire and rare earth-doped glass fiber
`
`lasers, making it easier and more desirable to sustain plasmas with shorter
`
`wavelength lasers. Pet. 14–18; Ex. 1003 ¶¶ 42–49; Ex. 1006, 567;
`
`Ex. 1022, 148.8 More importantly, by 2004, shorter wavelength lasers had
`
`several known advantages—e.g., producing energy that can be carried by
`
`
`
`7 David A. Cremers et al., Evaluation of the Continuous Optical Discharge
`for Spectrochemical Analysis, in SPECTROCHIMICA ACTA, Vol. 40B, No. 4, at
`665–79 (1985). Ex. 2002 (“Cremers”).
`8 RARE-EARTH-DOPED FIBER LASERS AND AMPLIFIERS 144–170 (Michel J.F.
`Digonnet ed., 2nd ed. 2001). Ex. 1022.
`
`18
`
`

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`IPR2015-01375
`Patent 9,048,000 B2
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`
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`quartz optical fibers for long distances and can travel through glass, so that
`
`“high-quality glass lenses can be used to focus the beam down to a minimum
`
`spot size.” Ex. 1016, 1601.9 Dr. Eden testifies that shorter wavelength
`
`lasers also were considerably smaller and more efficient than CO2 lasers.
`
`Ex. 1003 ¶ 46. Dr. Eden further testifies that substituting Gärtner’s
`
`continuous CO2 laser with a shorter wavelength laser would have required
`
`nothing more than routine skill, and a person with ordinary skill in the art
`
`would have had a reasonable expectation of success. Id. ¶¶ 86–87, 117–18.
`
`Indeed, as indicated in Silfvast (which was published in 2004), titanium
`
`sapphire lasers were commercially available and the most widely used
`
`tunable solid-state lasers. Ex. 1006, 565. On this record, we credit
`
`Dr. Eden’s testimony as it is consistent with the prior art disclosures.
`
`Patent Owner’s assertion that an artisan would not have looked to
`
`Mourou because the considerations that affect extreme UV sources are
`
`different than that of UV sources (Prelim. Resp. 12–22) also is unavailing.
`
`Patent Owner again limits Mourou’s teachings narrowly to the particular
`
`examples discussed in the reference. Significantly, Mourou, which discloses
`
`a light source comprising a shorter wavelength laser, is analogous art in that
`
`it is from the same field of endeavor as the ’000 patent—namely, light
`
`sources. See In re Clay, 996 F.2d 656, 658–59 (Fed. Cir. 1992). Given the
`
`advantages of using shorter wavelength lasers, an ordinarily skilled artisan
`
`would have looked to Mourou to improve Gärtner’s light source.
`
`
`
`9 HANDBOOK OF LASER TECHNOLOGY AND APPLICATIONS 1587–1611
`(Colin E. Webb & Julian D.C. Jones eds., 2004). Ex. 1016.
`19
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`

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`IPR2015-01375
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`Upon consideration of the evidence in the present record, we are
`
`persuaded by Petitioner’s explanations and supporting evidence that merely
`
`substituting Gärtner’s continuous CO2 laser with a continuous titanium
`
`sapphire laser that generates energy having shorter wavelengths, in view of
`
`Mourou and Silfvast, or in view of Kensuke and Silfvast, for sustaining a
`
`plasma to produce a UV light is no more than a predictable use of prior art
`
`elements according to their established functions—an obvious improvement.
`
`See KSR, 550 U.S. at 417. On this record, we determine that Petitioner has
`
`articulated sufficient reasons to combine Gärtner with Mourou and Silfvast,
`
`and to combine Gärtner with Kensuke and Silfvast.
`
`Conclusion
`
`For the foregoing reasons, we determine that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing on its assertions that
`
`claims 1, 15, and 18 are unpatentable over Gärtner in view of Mourou and
`
`Silfvast, and over Gärtner in view of Kensuke and Silfvast.
`
`D. Other Considerations
`
`Patent Owner urges the Board to deny one of the two asserted grounds
`
`of unpatentability “because the Petition presents multiple grounds in a
`
`redundant manner and makes no meaningful distinction between them.”
`
`Prelim. Resp. 56–58. We are cognizant that, under 37 C.F.R. § 42.108(a),
`
`the Board has the discretion to deny one or more grounds as being redundant
`
`to an instituted ground. The Board, however, is not required to exercise its
`
`discretion in every proceeding. Here, we observe that Petitioner asserts only
`
`two grounds, both of which involve the same base reference and challenge
`20
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`IPR2015-01375
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`
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`the same three claims. As discussed above, we determine that, for each
`
`asserted ground, Petitioner has demonstrated a reasonable likelihood of
`
`prevailing. Given the particular facts of this proceeding, we decline to
`
`exercise our discretion to deny either ground.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that there is a reasonable
`
`likelihood that Petitioner would prevail in challenging claims 1, 15, and 18.
`
`We, however, have not made a final determination as to the patentability of
`
`the challenged claims, nor with respect to claim construction.
`
`For the foregoing reasons, it is
`
`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted for the following grounds of unpatentability:
`
`Claims
`
`Basis
`
`References
`
`1, 15, and 18
`
`§ 103(a)
`
`Gärtner in view of Mourou and Silfvast
`
`1, 15, and 18
`
`§ 103(a)
`
`Gärtner in view of Kensuke and Silfvast
`
`
`
`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.
`
`21
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`

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`IPR2015-01375
`Patent 9,048,000 B2
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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
`
`22

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