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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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`
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`IPR2015-01375
`Patent 9,048,000 B2
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`
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`I.
`
`INTRODUCTION
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`ASML Netherlands B.V., Excelitas Technologies Corp., and Qioptiq
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`Photonics GmbH & Co. KG (collectively, “Petitioner”) filed a Petition
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`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
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`Technology, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 10
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`(“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
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`to claims 1, 15, and 18 of the ’000 patent.
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`A. Related Matter
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`The parties indicate that the ’000 patent is asserted in Energetiq
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`Technology, Inc. v. ASML Netherlands B.V., No. 1:15-cv-10240-LTS
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`(D. Mass.), and identify related proceedings. Pet. 1; Paper 11, 2–3.
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`B. The ’000 Patent
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`The ’000 patent claims under 35 U.S.C. § 120, through a series of
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`continuation and continuation-in-part applications, the benefit of the filing
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`date of an application filed March 31, 2006. Ex. 1001, at [63]; Ex. 1002.
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`The ’000 patent discloses a light source comprising a laser that ionizes a gas
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`within a chamber to produce a plasma-generated light. Id. at Abs.
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`According to the ’000 patent, such a light source can be used as a source of
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`illumination in a semiconductor photolithographic system. Id. at 1:27–37.
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`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
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`source, and is reproduced below with annotations added.
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`
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`As shown in annotated Figure 1, light source 100 includes laser 104,
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`chamber 128, and ignition source 140. Id. at 14:40–16:5. Laser 104 outputs
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`laser beam 116 via fiber optic element 108. Id. Collimator 112 directs the
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`laser beam to beam expander 118, which produces laser beam 122 and
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`directs it to optical lens 120. Id. Optical lens 120 focuses the beam to
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`produce smaller diameter laser beam 124 and directs it to region 130, where
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`plasma 132 is generated along with emitting light 136. Id.
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`C. Illustrative Claim
`
`Claims 1 and 15 are independent, and claim 18 depends directly from
`
`claim 1, which is reproduced below.
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`1. A method for illuminating features of a semiconductor wafer,
`comprising:
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`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
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`3
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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
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`illuminating the wafer with plasma-generated light having
`wavelengths greater than 50 nm that exits the sealed pressurized
`chamber.
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`Ex. 1001, 48:45–59 (emphases added).
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`D. Prior Art Relied Upon
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`
`
`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”).
`
`
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`1 The citations to Gärtner and Kensuke in this Decision are to their certified
`English-language translations in Exhibits 1004 and 1005, respectively.
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`E. Asserted Grounds of Unpatentability
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`Petitioner asserts the following grounds (Pet. 18, 42):
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`Claims
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`Basis
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`References
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`1, 15, and 18
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`§ 103(a)
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`Gärtner in view of Mourou and Silfvast2
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`1, 15, and 18
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`§ 103(a)
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`Gärtner in view of Kensuke and Silfvast
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`
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`II. ANALYSIS
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`A. Claim Construction
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`In an inter partes review, claim terms in an unexpired patent are given
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`their broadest reasonable construction in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed
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`Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015). Here, Petitioner
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`proposes construction for “light,” which is recited in all of the challenged
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`claims. Pet. 8–11. At this juncture, Patent Owner does not challenge
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`Petitioner’s proposed construction. See generally Prelim. Resp.
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`Upon review of the present record, we determine that Petitioner’s
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`construction is consistent with the broadest reasonable construction. For
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`purposes of this Decision, we adopt the following claim construction:
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`
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`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.
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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
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`light
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`
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`B. Principles of Law
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`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
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`differences between the claimed subject matter and the prior art are such that
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`the subject matter, as a whole, would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(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;
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`(2) any differences between the claimed subject matter and the prior art;
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`(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).
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`C. Obviousness
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`Petitioner asserts that claims 1, 15, and 18 are unpatentable under
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`§ 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
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`
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`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
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`claims 1, 15, and 18 obvious. Prelim. Resp. 10–56. In particular, Patent
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`Owner argues that the combinations do not disclose “an operating pressure
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`of at least 10 atmospheres,” and “laser energy having a wavelength range of
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`up to about 2000 nm.” Id. Patent Owner also alleges that Petitioner fails to
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`provide sufficient reasons to combine the prior art teachings. Id.
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`In our discussion below, we begin with a brief summary of the cited
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`prior art and then we address the parties’ contentions in turn, focusing on the
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`deficiencies alleged by Patent Owner.
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`1. Brief Summary of the Cited Prior Art
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`Gärtner
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`Gärtner discloses a radiation light source for a photolithographic
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`system, illuminating a photoresist layer on a semiconductor wafer.
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`Ex. 1004, 1:1–4. Figure 1 of Gärtner is reproduced below with annotations
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`added.
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`As shown in annotated Figure 1 of Gärtner, Gärtner’s light source
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`includes continuous CO2 laser 9, laser 10 (an ignition source), and
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`chamber 1. Id. at 4:31–5:12. Plasma 14 is generated inside chamber 1 and
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`emits light 15 into a downstream optical system through window 8. Id.
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`
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`Mourou
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`Mourou discloses a light source for semiconductor photolithography.
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`Ex. 1014 ¶ 1. Mourou’s light source includes a titanium sapphire laser for
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`providing energy with a wavelength of 800 nm. Id. ¶ 22.
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`Kensuke
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`Kensuke discloses a light source that provides a continuous spectrum
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`in the UV range. Ex. 1005, Abs. Kensuke’s light source includes a titanium
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`sapphire laser that generates energy having a wavelength range of about 500
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`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
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`565. According to Silfvast, “[c]ommercial titanium sapphire lasers are . . .
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`typically pumped with either argon ion lasers (for [continuous wave]
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`operation) or frequency-doubled Nd:YAG or Nd:YLF lasers (for pulsed
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`operation).” Id.
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`Pressure of 10 atmospheres or greater
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`2. Discussion
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`Claim 1 recites “a sealed pressurized plasma chamber having an
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`operating pressure of at least 10 atmospheres.” Ex. 1001, 48:47–48.
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`Claims 15 and 18 each recite “the pressure of the plasma chamber during
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`operation is greater than 10 atmospheres.” Id. at 49:48–49, 50:11–13.
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`Petitioner takes the position that Gärtner in combination with Mourou
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`and Silfvast, or with Kensuke and Silfvast, renders these limitations obvious.
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`Pet. 23–26, 44. As support, Petitioner directs our attention to Gärtner’s
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`disclosure of a gas-tight chamber containing a discharge medium, and an
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`example in which an argon or xenon is the “active medium with a working
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`pressure of 106 Pa.” Id. at 24 (citing Ex. 1004, 4:32, 5:15–16, Fig. 1).
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`Patent Owner counters that “Gärtner fails to disclose an operating
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`pressure of at least 10 atmospheres.” Prelim. Resp. 10–12. In particular,
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`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.
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`A pressure of 106 Pascal is equivalent to 10 atmospheres, however, if
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`the number is rounded mathematically to a whole number. Gärtner discloses
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`a specific pressure as a whole number. The Specification of the ’000 patent
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`also discloses the pressure ranges in whole numbers—e.g., “the chamber . . .
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`sustaining pressures between 10 to about 200 atmospheres”—and each of
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`the claimed ranges is recited in whole numbers. Ex. 1001, 17:9–11, 48:45–
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`46. On this record, we discern no meaningful difference between 106 Pascal
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`and 10 atmospheres in the context of the ’000 patent. Thus, we determine
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`that Petitioner has demonstrated sufficiently, for purposes of this Decision,
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`that Gärtner discloses “a sealed pressurized plasma chamber having an
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`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
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`can depend on one another in a particular system,” and it does not disclose
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`or suggest the claimed ranges. Prelim. Resp. 11–12. It is well-established,
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`however, that “discovery of an optimum value of a result effective variable
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`in a known process is ordinarily within the skill of the art.” In re Boesch,
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`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
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`variable is sufficient to find the variable result effective.” In re Applied
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`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
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`or xenon atmosphere with a pressure of 106 Pa, Gärtner discloses that “[t]he
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`optical depth . . . can be varied with a vast range by altering the pressure,”
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`and “[a]s the pressure increases, . . . the spectral distribution approaches
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`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
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`function is known as a “blackbody” source—“an optical source that loses
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`(emits) as much energy as it absorbs.” Ex. 1003 ¶ 67. Dr. Eden further
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`explains that, in such a light source, “[i]ncreasing the pressure results in the
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`light source absorbing more power, and emitting more power.” Id.
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`According to Dr. Eden, an ordinarily skilled artisan would have recognized
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`that increasing the pressure inside the plasma chamber of a light source will
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`increase the brightness of the plasma-generated light.4 Ex. 1003 ¶¶ 66–67;
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`Ex. 1004, 5:16–19. In short, the pressure within the plasma chamber of a
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`light source is a result effective variable.
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`Moreover, Dr. Eden testifies that “it would have been obvious to use
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`Gärtner’s teaching of varying the pressure and/or the knowledge of a person
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`of skill in the art to increase the pressure to above 10 atmospheres,” because
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`sustaining plasmas in chambers with such a pressure was a matter of routine
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`
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`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.
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`skill. Ex. 1003 ¶ 68, citing Ex. 1017, 177 (“laser-sustained plasmas have
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`been operated in a variety of molecular and rare gases at pressures from 1 to
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`more than 200 atm.”).5 We credit Dr. Eden’s testimony as it is supported by
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`other evidence in this record. At this juncture, Patent Owner does not allege
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`that the claimed ranges are critical or “produce a new and unexpected result
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`which is different in kind and not merely in degree from the results of the
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`prior art.” In re Aller, 220 F.2d 454, 456 (CCPA 1955).
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`For the foregoing reasons, we determine that Petitioner has
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`demonstrated sufficiently, for purposes of this Decision, that a combination
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`based, in part, on Gärtner teaches or suggests a plasma chamber having a
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`pressure of greater than 10 atmospheres, as recited in claims 15 and 18.
`
`Laser energy having a wavelength of up to about 2000 nm
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`Claim 1 recites “providing substantially continuous laser energy
`
`having a wavelength range of up to about 2000 nm . . . to produce a
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`plasma-generated light having wavelengths greater than 50 nm.” Ex. 1001,
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`48:49–55. By virtue of its dependency, claim 18 also requires this
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`limitation. Id. at 50:12–14. Independent claim 15 recites a similar
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`limitation, but does not require the laser energy to be “substantially
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`continuous.” Id. at 49:50–50:3.
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`Petitioner asserts that Gärtner in view of Mourou and Silfvast, or in
`
`view of Kensuke and Silfvast, renders the aforementioned limitation
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`
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`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
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`discloses a light source comprising a continuous CO2 laser for ionizing a gas
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`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
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`acknowledges that Gärtner does not disclose a “laser energy having a
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`wavelength range of up to above 2000 nm,” as recited in claims 1 and 15.
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`Pet. 28, 46–47. Nevertheless, Petitioner contends that lasers having energy
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`with shorter wavelengths were well-known in the art because Mourou,
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`Kensuke, and Silfvast each disclose a titanium sapphire laser that generates
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`energy having a wavelength, or a range, falling squarely within the claimed
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`range. Id. at 26–39, 44–54; Ex. 1005 ¶ 14 (500 to 1,100 nm); Ex. 1006,
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`565–66 (660–1,180 nm); Ex. 1014 ¶ 22 (800 nm). Petitioner further
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`maintains that it would have been obvious to substitute a titanium sapphire
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`laser for Gärtner’s continuous CO2 laser, in view of Mourou and Silfvast, or
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`in view of Kensuke and Silfvast. Pet. at 26–39, 44–54.
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`Patent Owner disagrees and advances two arguments. Prelim. Resp.
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`12–42, 43–56. First, Patent Owner argues that neither Mourou nor Kensuke
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`discloses a continuous laser or a laser that provides substantially continuous
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`energy. Id. at 9, 22–26, 42, 44–46.
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`It was known in the art at the time of the invention, however, that
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`“[c]ommercial titanium sapphire lasers are . . . typically pumped with either
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`argon ion laser (for [continuous wave] operation) or frequency-doubled
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`Nd:YAG or ND:YLF lasers (for pulsed operation),” as described by Silfvast.
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`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
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`continuous wave operation (hereafter “a continuous titanium sapphire laser”)
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`was commercially available at the time of the invention. Dr. Eden testifies
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`that such an artisan would have utilized a continuous titanium sapphire laser
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`in Gärtner’s light source “to achieve a 100% duty cycle which, in turn,
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`provides uninterrupted power to the plasma light source,” so that “the
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`plasma would provide a continuous output of light,” which is desirable for
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`semiconductor photolithography. Ex. 1003 ¶¶ 74, 108. On this record, we
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`credit Dr. Eden’s testimony as it is consistent with the prior art of record.
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`Second, Patent Owner argues that the prior art combinations would
`
`not generate a light having wavelengths greater than 50 nm. Prelim. Resp.
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`12–26, 42–46. In particular, Patent Owner contends that substituting
`
`Gärtner’s CO2 laser with a titanium sapphire laser would change Gärtner’s
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`principle of operation and require undue experimentation, completely
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`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
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`generates extreme UV light in water droplets, and it would have been too hot
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`and provide too much power to sustain the extreme UV light. Id. at 13–22.
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`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
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`reconfiguring the pulsed laser to a continuous laser. Id. at 16–18, 42–46.
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`As discussed above, continuous titanium sapphire lasers were commercially
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`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
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`be “uniquely challenging or difficult for one of ordinary skill in the art.” See
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`Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
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`Cir. 2007).
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`Patent Owner also fails to consider the prior art in the context of the
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`knowledge that a person of ordinary skill in the art would have had with
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`respect to light sources. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed.
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`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).
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`Here, Mourou illustrates that it was already known in the art to utilize a
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`titanium sapphire laser in a light source to produce a plasma-generated light
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`for semiconductor photolithography. Ex. 1014 ¶¶ 1, 9, 22. Gärtner teaches
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`that a desired wavelength range for such a light is in the UV region—
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`wavelengths greater than 50 nm. Ex. 1004, 2:28–30, 3:1–18, 4:34–5:1.
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`Moreover, Dr. Eden testifies that an ordinarily skilled artisan would have
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`understood that “laser sustained plasma produces light with a broad
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`spectrum of wavelengths, with the peak of the spectrum depending on the
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`power of the laser,” and such an artisan would have adjusted the power to
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`maintain Gärtner’s desired UV wavelength. Ex. 1003 ¶ 75. In fact, Silfvast
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`states that titanium sapphire lasers are the most widely used tunable
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`solid-state lasers. Ex. 1006, 565. And Kensuke discloses a light source
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`having a titanium sapphire laser to ionize a gas for generating a UV light
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`(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
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`been used to improve one device, and a person of ordinary skill in the art
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`would recognize that it would improve similar devices in the same way,
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`using the technique is obvious unless its actual application is beyond his or
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`her skill.”); see also id. at 420 (“The second error of the Court of Appeals
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`lay in its assumption that a person of ordinary skill attempting to solve a
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`problem will be led only to those elements of prior art designed to solve the
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`same problem.”).
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`Patent Owner’s reliance on Ratti is misplaced here. Gärtner’s
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`principle of operation is utilizing a laser to ionize a gas within a chamber for
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`sustaining a plasma to produce a light. Ex. 1004, 4:31–5:12. Patent Owner
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`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
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`modified, would have operated on the same principle as before, producing a
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`plasma-generated light using a continuous laser to ionize the gas in a
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`chamber. See In re Umbarger, 407 F.2d 425, 430–31 (CCPA 1969) (finding
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`Ratti inapplicable where the modified apparatus will operate “on the same
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`principles as before”).
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`We also are not persuaded by Patent Owner’s argument that Mourou
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`discloses using a titanium sapphire laser to produce an extreme UV light, and
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`not a UV light (Prelim. Resp. 12–22). Patent Owner attempts to limit
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`Mourou’s teachings narrowly to the particular examples disclosed in the
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`reference. In an obviousness analysis, a reference may be relied upon for all
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`that it would have suggested reasonably to one having ordinary skill in the
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`art. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
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`1989). The disclosure of a reference is not limited to the specific examples
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`contained in its disclosure. In re Mills, 470 F.2d 649, 651 (CCPA 1972).
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`Based on the evidence before us, we determine that Petitioner has
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`demonstrated sufficiently, for purposes of this Decision, that Gärtner in view
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`of Mourou and Silfvast, or in view of Kensuke and Silfvast, discloses
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`“providing substantially continuous laser energy having a wavelength range
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`of up to about 2000 nm . . . to produce a plasma-generated light having
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`wavelengths greater than 50 nm,” as required by claims 1, 15, and 18.
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`Rationale to combine the prior art teachings
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`Patent Owner contends that Petitioner fails to articulate sufficient
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`reasons to combine Gärtner with Mourou and Silfvast, and to combine
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`Gärtner with Kensuke and Silfvast. Prelim. Resp. 12–56. Patent Owner also
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`takes the position that the prior art in this record teaches away from
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`replacing Gärtner’s continuous CO2 laser with a shorter wavelength laser,
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`such as those disclosed in Mourou, Kensuke, and Silfvast. Id. at 26–42, 46–
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`48. To substantiate its contentions, Patent Owner alleges that Cross6,
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`6 U.S. Patent No. 4,780,608, issued Oct. 25, 1988. Ex. 1015 (“Cross”).
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`Keefer, and Cremers7 would have discouraged an artisan from using shorter
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`wavelength lasers. Id.
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`In an obviousness analysis, prior art must be read in context, taking
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`account of the knowledge possessed by one with ordinary skill in the art at
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`the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1259–
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`1262 (Fed. Cir. 2007). Here, the earliest filing date claimed by the ’000
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`patent is March 31, 2006. Ex. 1001 at [63]. Yet, Patent Owner relies upon
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`Cross, Keefer, and Cremers, which were published in 1988, 1989, and 1985,
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`respectively. Those references, at best, show merely the knowledge of an
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`artisan in the 1980s. Such evidence does not support Patent Owner’s
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`contentions, as it does not account for the technological advancements in the
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`relevant art between 1989 and 2006.
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`As Petitioner points out, laser technology for shorter wavelengths
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`improved significantly during the 1990s and early 2000s because of the
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`development of the titanium-doped sapphire and rare earth-doped glass fiber
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`lasers, making it easier and more desirable to sustain plasmas with shorter
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`wavelength lasers. Pet. 14–18; Ex. 1003 ¶¶ 42–49; Ex. 1006, 567;
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`Ex. 1022, 148.8 More importantly, by 2004, shorter wavelength lasers had
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`several known advantages—e.g., producing energy that can be carried by
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`
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`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.
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`quartz optical fibers for long distances and can travel through glass, so that
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`“high-quality glass lenses can be used to focus the beam down to a minimum
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`spot size.” Ex. 1016, 1601.9 Dr. Eden testifies that shorter wavelength
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`lasers also were considerably smaller and more efficient than CO2 lasers.
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`Ex. 1003 ¶ 46. Dr. Eden further testifies that substituting Gärtner’s
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`continuous CO2 laser with a shorter wavelength laser would have required
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`nothing more than routine skill, and a person with ordinary skill in the art
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`would have had a reasonable expectation of success. Id. ¶¶ 86–87, 117–18.
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`Indeed, as indicated in Silfvast (which was published in 2004), titanium
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`sapphire lasers were commercially available and the most widely used
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`tunable solid-state lasers. Ex. 1006, 565. On this record, we credit
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`Dr. Eden’s testimony as it is consistent with the prior art disclosures.
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`Patent Owner’s assertion that an artisan would not have looked to
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`Mourou because the considerations that affect extreme UV sources are
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`different than that of UV sources (Prelim. Resp. 12–22) also is unavailing.
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`Patent Owner again limits Mourou’s teachings narrowly to the particular
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`examples discussed in the reference. Significantly, Mourou, which discloses
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`a light source comprising a shorter wavelength laser, is analogous art in that
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`it is from the same field of endeavor as the ’000 patent—namely, light
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`sources. See In re Clay, 996 F.2d 656, 658–59 (Fed. Cir. 1992). Given the
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`advantages of using shorter wavelength lasers, an ordinarily skilled artisan
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`would have looked to Mourou to improve Gärtner’s light source.
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`
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`9 HANDBOOK OF LASER TECHNOLOGY AND APPLICATIONS 1587–1611
`(Colin E. Webb & Julian D.C. Jones eds., 2004). Ex. 1016.
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`Upon consideration of the evidence in the present record, we are
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`persuaded by Petitioner’s explanations and supporting evidence that merely
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`substituting Gärtner’s continuous CO2 laser with a continuous titanium
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`sapphire laser that generates energy having shorter wavelengths, in view of
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`Mourou and Silfvast, or in view of Kensuke and Silfvast, for sustaining a
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`plasma to produce a UV light is no more than a predictable use of prior art
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`elements according to their established functions—an obvious improvement.
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`See KSR, 550 U.S. at 417. On this record, we determine that Petitioner has
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`articulated sufficient reasons to combine Gärtner with Mourou and Silfvast,
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`and to combine Gärtner with Kensuke and Silfvast.
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`Conclusion
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`For the foregoing reasons, we determine that Petitioner has
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`demonstrated a reasonable likelihood of prevailing on its assertions that
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`claims 1, 15, and 18 are unpatentable over Gärtner in view of Mourou and
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`Silfvast, and over Gärtner in view of Kensuke and Silfvast.
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`D. Other Considerations
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`Patent Owner urges the Board to deny one of the two asserted grounds
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`of unpatentability “because the Petition presents multiple grounds in a
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`redundant manner and makes no meaningful distinction between them.”
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`Prelim. Resp. 56–58. We are cognizant that, under 37 C.F.R. § 42.108(a),
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`the Board has the discretion to deny one or more grounds as being redundant
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`to an instituted ground. The Board, however, is not required to exercise its
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`discretion in every proceeding. Here, we observe that Petitioner asserts only
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`two grounds, both of which involve the same base reference and challenge
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`the same three claims. As discussed above, we determine that, for each
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`asserted ground, Petitioner has demonstrated a reasonable likelihood of
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`prevailing. Given the particular facts of this proceeding, we decline to
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`exercise our discretion to deny either ground.
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`III. CONCLUSION
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`For the foregoing reasons, we determine that there is a reasonable
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`likelihood that Petitioner would prevail in challenging claims 1, 15, and 18.
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`We, however, have not made a final determination as to the patentability of
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`the challenged claims, nor with respect to claim construction.
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`For the foregoing reasons, it is
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`IV. ORDER
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`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
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`review is hereby instituted for the following grounds of unpatentability:
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`Claims
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`Basis
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`References
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`1, 15, and 18
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`§ 103(a)
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`Gärtner in view of Mourou and Silfvast
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`1, 15, and 18
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`§ 103(a)
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`Gärtner in view of Kensuke and Silfvast
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`FURTHER ORDERED that no other ground of unpatentability
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`asserted in the Petition is authorized for this inter partes review; and
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
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`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
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`will commence on the entry date of this decision.
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`PETITIONER:
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`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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