`571-272-7822
`
`
`
`
`
`
`
`
` Paper 15
`
`
`
` Entered: April 28, 2016
`
`
`
`
`
`
`
`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 IPR2016-00126
`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
`
`
`
`
`
`
`
`IPR2016-00126
`Patent 9,048,000 B2
`
`
`
`INTRODUCTION
`I.
`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 7–10 of U.S. Patent
`No. 9,048,000 B2 (Ex. 1101, “the ’000 patent”). Paper 4 (“Pet.”). Energetiq
`Technology, Inc. (“Patent Owner”) did not file a Preliminary Response.
`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 7–10 of the ’000 patent.
`
`A. Related Matter
`The parties indicate that the ’000 patent is asserted in Energetiq
`Techn., Inc. v. ASML Netherlands B.V., No. 1:15-cv-10240-LTS (D. Mass.),
`and identify related proceedings. Pet. 1; Paper 12, 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. 1101, at [63]; Ex. 1102.
`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
`
`
`
`IPR2016-00126
`Patent 9,048,000 B2
`
`
`
`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. Id.
`Plasma 132 is generated within the chamber to produce light 136. Id.
`
`C. Illustrative Claim
`Of the challenged claims, claim 7 is the sole independent claim.
`Claims 8–10 depend, directly or indirectly, from claim 7, which recites:
`7. A laser driven light source comprising:
`a sealed pressurized plasma chamber having an ignition source
`for ionizing a gas within the chamber and a sapphire window for
`maintaining a pressure therein;
`
`3
`
`
`
`IPR2016-00126
`Patent 9,048,000 B2
`
`
`
`a laser for providing at least substantially continuous energy
`through the sapphire window to the ionized gas within the
`pressurized plasma chamber to sustain a plasma and produce
`plasma-generated light having wavelengths greater than 50 nm,
`the pressure of the plasma chamber during operation is greater
`than 10 atmospheres
`wherein the sapphire window allows the plasma-generated light
`to exit the pressurized chamber.
`Ex. 1101, 49:5–17 (emphases added).
`
`D. Prior Art of Record
`In support of its Petition, Petitioner proffers the following prior art
`
`references1:
`(Ex. 1104)
`May 3, 1985
` FR 2554302 A1
`Gärtner
`(Ex. 1105)
`Aug. 27, 1986
` JPS61-193358
`
`Sato
`
`(Ex. 1114)
`Jul. 2, 2002
`Eastlund US 6,414,436 B1
`
`(Ex. 1115)
`Nov. 1, 2001
`Guthrie
`US 2001/0035720
`Zane A. Arp et al., Feasibility of Generating a Useful Laser-Induced
`Breakdown Spectroscopy Plasma on Rocks at High Pressure:
`Preliminary Study for a Venus Mission, in 59B SPECTROCHIMICA
`ACTA, PART B: ATOMIC SPECTROSCOPY, 987–999 (Elsevier 2004).
`Ex. 1106 (“Arp”).
`WILLIAM T. SILFVAST, LASER FUNDAMENTALS 1–6, 199–222, 565–68
`(2d ed. 2004). Ex. 1109 (“Silfvast”).
`PATEL & ZAIDI, THE SUITABILITY OF SAPPHIRE FOR LASER WINDOWS,
`in 10 MEAS. SCI. TECHNOL. 146–151 (1999). Ex. 1116 (“Patel”).
`
`
`1 The citations to Sato and Gärtner are to their certified English-language
`translations in Exhibits 1105 and 1104, respectively.
`4
`
`
`
`IPR2016-00126
`Patent 9,048,000 B2
`
`
`
`D. KEEFER, LASER SUSTAINED PLASMA, in RADZIEMSKI ET AL., LASER-
`INDUCED PLASMA AND APPLICATIONS (CRC Press 1989). Ex. 1117
`(“Keefer”).
`RONALD WAYNANT ET AL., ELECTRO-OPTICS HANDBOOK, Chapter 10
`(2d ed. 2000). Ex. 1122 (“Waynant”).
`KELIN J. KUHN, LASER ENGINEERING, Chapter 10, at 303–43 (Prentice
`Hall 1998). Ex. 1127 (“Kuhn”).
`CHRISTOPHER C. DAVIS, LASER AND ELECTRO-OPTICS:
`FUNDAMENTALS AND ENGINEERING (reprint 2000) (Cambridge Univ.
`Press 1996). Ex. 1128 (“Davis”).
`G.C. WEI, JOURNAL OF PHYSICS D 3057 (2005). Ex. 1129 (“Wei”).
`
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds (Pet. 18, 42):
`
`Claims
`7–10
`
`Basis
`§ 103(a)
`
`References
`Sato in view of Gärtner
`
`7–10
`
`
`
`§ 103(a)
`
`Gärtner in view of Arp
`
`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). Here, Petitioner
`proposes construction for “light source” and “ignition source for ionizing
`
`5
`
`
`
`IPR2016-00126
`Patent 9,048,000 B2
`
`
`
`gas within the chamber,” which are recited in independent claim 7. Pet. 9–
`12. Upon review of the present record, we determine that Petitioner’s
`constructions are consistent with the broadest reasonable construction.
`For purposes of this Decision, we adopt the following claim constructions:
`
`Claim Term
`
`light source
`
`ignition source
`for ionizing a gas
`within the
`chamber
`
`
`
`Construction
`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
`An electrode, an ultraviolet ignition source, a
`capacitive ignition source, an inductive ignition
`source, an RF ignition source, a microwave ignition
`source, a flash lamp, a pulsed laser, a pulsed lamp or
`the laser for ionizing a gas within the chamber
`
`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;
`
`6
`
`
`
`IPR2016-00126
`Patent 9,048,000 B2
`
`
`
`(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).
`It is well-settled that the level of ordinary skill in the art may be
`reflected by the prior art of record, as here. 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).
`We analyze the instituted grounds of unpatentability in accordance
`with the above-stated principles.
`
`C. Obviousness over Sato and Gärtner
`
`Petitioner asserts that claims 7–10 are unpatentable under § 103(a) 2 as
`obvious over the combination of Sato and Gärtner. Pet. 19–41. As support,
`Petitioner proffers a Declaration of Dr. J. Gary Eden, who has been retained
`as an expert witness for the instant proceeding. Ex. 1103.
`Upon review of Petitioner’s contentions and supporting evidence, we
`determine that Petitioner has demonstrated sufficiently for purposes of this
`Decision that the combination of Sato and Gärtner teaches or suggests all of
`the limitations of claims 7–10, and renders the claimed subject matter as a
`whole obvious. In our discussion below, we provide a brief summary of
`Sato and Gärtner, and then we address certain claim limitations in detail as
`examples.
`
`
`2 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.
`7
`
`
`
`IPR2016-00126
`Patent 9,048,000 B2
`
`
`
`Sato
`Sato discloses a light source device, comprising a laser oscillator that
`
`emits a laser beam. Figure 1 of Sato is reproduced below:
`
`
`As shown in Figure 1 of Sato, laser oscillator 1 emits a continuous or pulsed
`laser beam. Ex. 1105, 2. Optical system elements 2, 3 and focusing optical
`system element 4 project the laser beam onto the focal point within sapphire
`tube bulb 5, which is filled with a noble gas, e.g., xenon. Id. The sealed gas
`is excited by the laser beam to produce a plasma-generated light. Id.
`
`Gärtner
`Gärtner discloses a radiation light source for a photolithographic
`system, which could be used for illuminating a photoresist layer on a
`semiconductor wafer. Ex. 1104, 1:1–4. Figure 1 of Gärtner is reproduced
`below with annotations added.
`
`8
`
`
`
`IPR2016-00126
`Patent 9,048,000 B2
`
`
`
`
`
`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.
`
`Sealed Pressurized Plasma Chamber
`Claim 7 recites a laser driven light source comprising “a sealed
`pressurized plasma chamber having . . . a sapphire window for maintaining a
`pressure herein,” and “wherein the sapphire window allows the
`plasma-generated light to exit the pressurized chamber.” Ex. 1101, 49:5–8.
`Claim 8 recites “wherein the pressurized plasma chamber contains one or
`more of a noble gas, Xe, Ar, Ne, or Kr.” Id. at 49:18–20.
`Petitioner asserts that the combination of Sato and Gärtner discloses
`these limitations of claims 7 and 8. Pet. 20–26, 39–40. For purposes of this
`Decision, we are persuaded by Petitioner’s explanation and supporting
`evidence. Notably, Sato discloses an ultraviolet light source having a
`9
`
`
`
`IPR2016-00126
`Patent 9,048,000 B2
`
`
`
`sapphire tube bulb “for causing sealed gas to emit plasma through excitation
`with a laser beam.” Ex. 1105, 1, 2. Sato also discloses that the sapphire
`tube bulb is filled with a noble gas, e.g., xenon. Id. at 2. Further, Gärtner
`also discloses a light source comprising a sealed pressurized plasma
`chamber filled with a xenon gas. Ex. 1104, 4:31–5:16. On this record, we
`determine that Petitioner has demonstrated sufficiently for purposes of this
`Decision that the combination of Sato and Gärtner discloses a laser light
`source comprising a sealed pressurized plasma chamber that contains a
`xenon gas, and has a sapphire window for maintaining a pressure therein and
`allowing the light to exit the chamber, as required by claims 7 and 8.
`
`Ignition source and laser
`Claim 7 recites “an ignition source for ionizing a gas within the
`chamber,” and “a laser for providing at least substantially continuous energy
`through the sapphire window to the ionized gas within the pressurized
`plasma chamber to sustain a plasma and produce plasma-generated light
`having wavelengths greater than 50 nm.” Ex. 1101, 49:6–14 (emphases
`added). Claim 9 depends directly from claim 7, and recites “wherein the
`ignition source comprises or includes an electrode, . . . a pulsed laser, a
`pulsed lamp or the laser.” Id. at 49:21–26. Claim 10 depends directly from
`claim 9, and recites “wherein the laser source comprises a continuous wave
`(CW) laser.” Id. at 49:27–28.
`Petitioner contends that the combination of Sato and Gärtner discloses
`a laser ignition source for ionizing a gas within the chamber, and a
`continuous laser for sustaining a plasma to produce a light, as required by
`10
`
`
`
`IPR2016-00126
`Patent 9,048,000 B2
`
`
`
`claims 7, 9, and 10. Pet. 22–24, 40, 41. Based on the evidence presently
`before us, we are persuaded by Petitioner’s contention.
`Notably, Sato discloses a light source having a laser oscillator that
`“emits a continuous or pulsed laser beam of an intensity that is adequate to
`excite electrodischarge of the filled gas.” Ex. 1105, 2. Sato explains that the
`laser beam excites the gas to generate a plasma, producing an ultraviolet
`light, which has wavelengths greater than 50 nm. Id.; see also Ex. 1103 ¶ 73
`(an ultraviolet light has wavelengths in the range of 200–400 nm and
`vacuum ultraviolet light has wavelengths in the range of 100–200 nm). In
`short, Sato’s laser ionizes a xenon gas within a sapphire tube bulb and
`provides continuous energy to sustain a plasma, producing an ultraviolet
`light.
`Petitioner acknowledges that Sato discloses a single laser that is used
`to generate and sustain the plasma, and does not utilize a separate and
`independent ignition source. Pet. 22–24. Nevertheless, Petitioner contends
`that, even if the claims require a separate ignition source, the combination of
`Sato and Gärtner would still render the aforementioned limitations recited in
`claims 7, 9, and 10 obvious. Id. at 23–24, 27–28, 33–41. In particular,
`Petitioner explains that Gärtner discloses a laser light source having a
`separate ignition source for ionizing a gas and a laser for sustaining the
`plasma to produce an ultraviolet light. Id. Indeed, Gärtner describes using a
`pulse laser (shown as pulse laser 10 in Figure 1 of Gärtner reproduced
`above) as an ignition source to ionize a gas within the plasma chamber, and
`a continuous laser (shown as continuous laser 9 in Figure 1 of Gärtner
`
`11
`
`
`
`IPR2016-00126
`Patent 9,048,000 B2
`
`
`
`reproduced above) for sustaining the plasma to produce a light. Ex. 1104,
`3:20–31, 4:31–5:12. Gärtner also explains that a desired wavelength range
`for such a light is in the UV region. Id. at 2:28–30, 3:1–18, 4:34–5:1.
`More importantly, as Petitioner notes, Gärtner indicates that a single
`laser can be used to generate and sustain the plasma, like in Sato, or
`alternatively, if the power is insufficient, a separate ignition source can be
`employed. Pet. 24, 35–36; Ex. 1104, 5:12–14. Gärtner further teaches the
`advantages of using a separate ignition source in certain situations—e.g.,
`allowing a lower power laser to be used to sustain the plasma. Ex. 1104,
`3:29–32. In support of Petitioner’s contention, Dr. Eden testifies that “it
`would have been obvious to use a separate ignition source in Sato to enable
`a laser of modest power to be used to sustain the plasma.” Ex. 1103 ¶ 88.
`On this record, we give Dr. Eden’s testimony substantial weight in that
`regard as it is supported by the prior art disclosures. See, e.g., Ex. 1104,
`3:29–32, 5:12–14. Based on the evidence currently before us, we are
`persuaded that Petitioner has articulated reasoning with rational
`underpinning for combining Gärtner’s teaching of a separate laser ignition
`source with Sato. 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.”).
`For the foregoing reasons, we determine that Petitioner has
`demonstrated sufficiently for purposes of this Decision that the combination
`
`12
`
`
`
`IPR2016-00126
`Patent 9,048,000 B2
`
`
`
`of Sato and Gärtner discloses a pulsed laser ignition source for ionizing a
`gas, and a continuous laser for sustaining a plasma to produce a light that has
`wavelengths greater than 50 nm, as required by claims 7, 9, and 10.
`
`Pressure greater than 10 atmospheres
`Claim 7 recites “the pressure of the plasma chamber during operation
`is greater than 10 atmospheres.” Ex. 1101, 49:13–15. Petitioner asserts that,
`although Sato does not specify explicitly a particular operating pressure, a
`person of ordinary skill in the art would have recognized that Sato’s sapphire
`tube bulb would allow pressures greater than 10 atmospheres. Pet. 27–35.
`Based on the present record, we are persuaded by Petitioner’s analysis.
`As Petitioner notes, Gärtner discloses an example of using a xenon
`gas as the “active medium with a working pressure of 106 Pa,” which is
`equivalent to approximately 9.9 atmospheres. Id. at 29 (citing Ex. 1104,
`4:32, 5:15–16). Gärtner also 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. 1104, 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. 1103 ¶¶ 79–80. Dr. Eden further explains
`that, in such a light source, “[i]ncreasing the pressure in a lamp (light source)
`results in the light source absorbing more power, and emitting more power.”
`Id. According to Dr. Eden, an ordinarily skilled artisan would have
`
`13
`
`
`
`IPR2016-00126
`Patent 9,048,000 B2
`
`
`
`recognized that increasing the pressure inside the plasma chamber of a light
`source will increase the brightness of the plasma-generated light. Id.
`Additionally, 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 skill. Id. at ¶¶ 81–82. Dr. Eden also testifies that it would have been
`obvious, in light of Gärtner, to operate Sato’s sapphire tube bulb with a
`pressure greater than 10 atmospheres to achieve a brighter light source. Id.
`We credit Dr. Eden’s testimony as it is supported by the prior art disclosures
`in this record and what the disclosures would have conveyed to one with
`ordinary skill in the art at the time of the invention. See, e.g., Ex. 1104,
`5:15–19; Ex. 1114, 7:25–27 (“By allowing operation at higher fill pressures,
`the stronger single crystal (SC) sapphire tubing allows higher power density
`and thus higher efficacy.”); Ex. 1106, 988 (disclosing a plasma chamber
`with sapphire windows that has a pressure of 204 atmospheres, which
`demonstrates that sapphire is sufficiently strong to withstand pressures of
`over 200 atmospheres).
`At this juncture, the evidence in this record does not show that the
`claimed range is critical or produces “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). We are persuaded that
`Petitioner has articulated reasoning with rational underpinning for
`combining Gärtner’s teaching of increasing the pressure within the plasma
`
`14
`
`
`
`IPR2016-00126
`Patent 9,048,000 B2
`
`
`
`chamber to greater than 10 atmospheres with Sato. See KSR, 550 U.S. at
`417.
`
`For the foregoing reasons, we determine that Petitioner has
`demonstrated sufficiently for purposes of this Decision that the combination
`of Sato and Gärtner teaches or suggests a plasma chamber having a pressure
`of greater than 10 atmospheres, as recited in claim 7.
`
`Conclusion for Obviousness over Sato and Gärtner
`For the foregoing reasons, we determine that Petitioner has
`demonstrated a reasonable likelihood of prevailing on its assertions that
`claims 7–10 are unpatentable over the combination of Sato and Gärtner.
`
`
`D. Obviousness over Gärtner and Arp
`Petitioner asserts that claims 7–10 are unpatentable under § 103(a) as
`obvious over the combination of Gärtner and Arp. Pet. 41–58; see also id. at
`19–41. As support, Petitioner directs our attention to Dr. Eden’s
`Declaration. Ex. 1103.
`Upon review of Petitioner’s contentions and supporting evidence, we
`determine that Petitioner has demonstrated sufficiently for purposes of this
`Decision that the combination of Gärtner and Arp teaches or suggests all of
`the limitations of claims 7–10, and renders the claimed subject matter as a
`
`15
`
`
`
`IPR2016-00126
`Patent 9,048,000 B2
`
`
`
`whole obvious. In our discussion below, we provide a brief summary of
`Arp, and then we address certain claim limitations in detail as examples.3
`
`Arp
`Arp discloses a plasma light source comprising a chamber with a
`
`sapphire window for transmitting a plasma-generated light. Ex. 1106, 987–
`989. Figure 1 of Arp is reproduced below with annotations added by
`Petitioner, Pet. 44.
`
`
`As shown in the annotated Figure 1 of Arp above, a laser (in red)
`provides energy that enters through the sapphire window (in orange). Id. at
`989. Arp further explains that the laser beam enters the chamber through the
`same sapphire window by which the plasma light exits the chamber. Id.
`
`
`3 A brief summary of Gärtner has been provided previously.
`16
`
`
`
`IPR2016-00126
`Patent 9,048,000 B2
`
`
`
`Sapphire Window
`
`Claim 7 recites a sealed pressurized plasma chamber having
`“a sapphire window for maintaining a pressure therein,” and “wherein the
`sapphire window allows the plasma-generated light to exit the pressurized
`chamber.” Ex. 1101, 49:6–17 (emphases added). Claim 7 also recites “a
`laser for providing at least substantially continuous energy through the
`sapphire window.” Id. (emphasis added).
`Petitioner asserts that the combination of Gärtner and Arp renders the
`aforementioned limitations obvious. Pet. 41–58; see also id. at 23–25, 27–
`33, 40–41. For purposes of this Decision, we are persuaded by Petitioner’s
`explanations and supporting evidence in this present record.
`As discussed above, Gärtner discloses a laser light source having a
`sealed pressurized plasma chamber (shown as gas-tight chamber 1 in
`Figure 1 of Gärtner reproduced above), which contains a xenon gas for
`generating a plasma inside the chamber to produce an ultraviolet light.
`Ex. 1104, 2:28–30, 3:1–18, 4:34–5:1, 5:15–16 (“for example in an argon or
`xenon atmosphere as active medium with a working pressure of 106 Pa”).
`Gärtner further discloses using a pulse laser (shown as pulse laser 10 in
`Figure 1 of Gärtner reproduced above) as an ignition source for ionizing a
`gas within the chamber, and a continuous laser (shown as continuous laser 9
`in Figure 1 of Gärtner reproduced above) for providing a continuous energy
`through a window to sustain the plasma. Id. at 3:20–31, 4:31–5:12.
`Gärtner’s plasma chamber has a plurality of windows for maintaining
`a pressure therein (shown as windows 7, 6, and 8 in Figure 1 of Gärtner
`
`17
`
`
`
`IPR2016-00126
`Patent 9,048,000 B2
`
`
`
`reproduced above). Id. at 4:31–5–9. Gärtner’s window 8 allows the
`plasma-generated light to exit the chamber. Id. at 4:31–5:9 (“The
`radiation 15 from the plasma can be fed into the downstream optical system
`through the window 8.”). Gärtner also indicates that the continuous laser
`provides continuous energy through window 6 to sustain the plasma. Id. at
`4:32–5:9.
`Although Gärtner does not disclose a sapphire window, Petitioner
`notes that such a feature nevertheless was known in the art, as evidenced by
`Arp. Pet. 43, 46–56. Indeed, Arp discloses a laser light source having a
`plasma chamber with a sapphire window. Ex. 1106, 987–89. Arp describes
`the use of sapphire windows in a light source application that requires a high
`pressure. Id. at 989. Arp further teaches a light source with a plasma
`chamber having a single sapphire window that allows laser energy to enter
`and plasma-generated light to exit the chamber. Id. at 987–89, Fig. 1.
`More importantly, as Petitioner notes, it was well-known at the time
`of the invention that using sapphire had several advantages, including its
`tensile strength which allows it to withstand high pressures, excellent
`thermal properties for plasma lamps, and physical properties superior to
`those of quartz. Pet. 48–51; Ex. 1106, 998; Ex. 1114, 3:24–34, 7:10–28,
`Tables 1–3; Ex. 1122, 10.9; Ex. 1123, 4; Ex. 1125, 6:46–48; Ex. 1126, 4:25–
`28; Ex. 1115 ¶¶ 11, 24–25, 44; Ex. 1103 ¶¶ 122–25. Sapphire also has
`several advantages as a laser window, including its low bulk absorption
`coefficient, high mechanical strength, chemical inertness, high resistance,
`
`18
`
`
`
`IPR2016-00126
`Patent 9,048,000 B2
`
`
`
`and high electrical resistivity. Pet. 51–52; Ex. 1116, 146, 151; Ex. 1103
`¶¶ 126–27.
`Dr. Eden testifies that a person of ordinary skill in the art would have
`implemented Gärtner’s light source with Arp’s sapphire window in view of
`the advantages of sapphire, allowing Gärtner’s plasma chamber to operate at
`higher pressures. Ex. 1103 ¶¶ 122–31. Dr. Eden also testifies that such an
`artisan would have combined Gärtner with Arp’s teaching of a single
`sapphire window to allow the laser energy to enter and plasma-generated
`light to exit the chamber through the same window, so that the number of
`windows would be minimized, maintaining the pressure within the chamber
`more efficiently. Id. at ¶¶ 132–34. On this record, we credit Dr. Eden’s
`testimony in that regard as it is consistent with the prior art disclosures and
`what the disclosures would have conveyed to one with ordinary skill in the
`art at the time of the invention. See, e.g., Ex. 1106, 987–88; Ex. 1114, 3:24–
`34, 7:24–28 (“By allowing operation at higher fill pressures, the stronger
`single crystal (SC) sapphire tubing allows higher power density and thus
`higher efficacy.”); Ex. 1122, 10.9. Based on the evidence currently before
`us, we are persuaded that Petitioner has articulated reasoning with rational
`underpinning to explain why a relevant skilled artisan would have combined
`Arp’s teaching of a single sapphire window with Gärtner. See KSR, 550
`U.S. at 417.
`For the foregoing reasons, we determine that Petitioner has
`demonstrated sufficiently for purposes of this Decision that the combination
`of Gärtner and Arp teaches or suggests a laser driven light source
`
`19
`
`
`
`IPR2016-00126
`Patent 9,048,000 B2
`
`
`
`comprising a sealed pressurized plasma chamber that has a sapphire window
`for maintaining a pressure therein, and for allowing the laser energy to enter
`and plasma-generated light to exit the chamber through the same window, as
`required by claim 7.
`
`Conclusion for Obviousness over Gärtner and Arp
`For the foregoing reasons, we determine that Petitioner has
`demonstrated a reasonable likelihood of prevailing on its assertions that
`claims 7–10 are unpatentable over the combination of Gärtner and Arp.
`
`
`III. CONCLUSION
`
`In consideration of the foregoing, we determine that there is a
`reasonable likelihood that Petitioner would prevail in challenging claims 7–
`10. We, however, have not made a final determination as to the patentability
`of the challenged claims, nor with respect to claim construction.
`
`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 for the following grounds of unpatentability:
`
`Claims
`7–10
`
`7–10
`
`Basis
`§ 103(a)
`
`References
`Sato in view of Gärtner
`
`§ 103(a)
`
`Gärtner in view of Arp
`
`20
`
`
`
`IPR2016-00126
`Patent 9,048,000 B2
`
`
`
`
`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.
`
`
`
`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.
`Gerald Worth
`Safraz Ishmael
`Jinnie Reed
`Proskauer Rose LLP
`PTABMattersBoston@proskauer.com
`JCapraro@proskauer.com
`gworth@proskauer.com
`sishmael@proskauer.com
`jreed@proskauer.com
`
`21