UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`
`
`
`ASML Netherlands B.V., Excelitas Technologies Corp., and Qioptiq Photonics
`GmbH & Co. KG,
`Petitioners
`
`v.
`
`Energetiq Technology, Inc.,
`Patent Owner.
`
`Case IPR2016-00126
`
`
`
`DECLARATION OF J. GARY EDEN, PH.D.
`U.S. PATENT NO. 9,048,000
`CLAIMS 7-10
`
`
`
`
`
`ASML 1103
`
`

`
`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`TABLE OF CONTENTS
`
`Page
`
`V. 
`
`BACKGROUND ............................................................................................. 1 
`I. 
`LEGAL PRINCIPLES ..................................................................................... 6 
`II. 
`PERSON OF ORDINARY SKILL IN THE ART .......................................... 8 
`III. 
`IV.  OVERVIEW OF THE ’000 PATENT ............................................................ 8 
`A. 
`Challenged Claims .............................................................................. 10 
`B. 
`Summary of the Prosecution History .................................................. 11 
`CLAIM CONSTRUCTION .......................................................................... 13 
`A. 
`“Light source” ..................................................................................... 13 
`B. 
`Ignition source for ionizing a gas within the chamber ........................ 15 
`VI.  THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 16 
`A. 
`Laser Sustained Plasma Light Sources Were Known Long
`Before the Priority Date of the ’000 Patent ......................................... 16 
`In addition, Implementing a sapphire window to transmit laser
`energy and emitted light was well known in the art ........................... 20 
`High pressure plasma light sources were well-known in the art ........ 22 
`C. 
`VII.  GROUNDS FOR FINDING THE CHALLENGED CLAIMS INVALID ... 23 
`A.  Ground 1: Claims 7-10 Are Unpatentable Over Sato in View of
`Gärtner ................................................................................................. 23 
`1. 
`Independent Claim 7 .................................................................... 24 
`2.  Dependent Claims ........................................................................ 45 
`Ground 2: Claims 7-10 Are Unpatentable Over Gärtner in View
`of Arp................................................................................................... 47 
`1. 
`Independent Claim 7 .................................................................... 48 
`2.  Dependent Claims ........................................................................ 63 
`VIII.  RESPONSE TO ARGUMENTS RAISED BY PATENT OWNER IN ITS
`PRELIMINARY INJUNCTION MOTION .................................................. 64 
`A. 
`Patent Owner’s Arguments Regarding Objective Indicia of
`Non-Obviousness ................................................................................ 65 
`IX.  AVAILABILITY FOR CROSS-EXAMINATION ...................................... 66 
`
`B. 
`
`B. 
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`i
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`

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`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`RIGHT TO SUPPLEMENT .......................................................................... 66 
`JURAT ........................................................................................................... 67 
`
`X. 
`XI. 
`
`
`
`ii
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`

`
`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`
`I, J. Gary Eden, Ph.D., declare as follows:
`
`1. My name is J. Gary Eden.
`
`I.
`
`BACKGROUND
`2.
`
`I am the Gilmore Family Professor of Electrical and Computer
`
`Engineering and Director of the Laboratory for Optical Physics and Engineering at
`
`the University of Illinois in Urbana, Illinois.
`
`3.
`
`I received a B.S. in Electrical Engineering (High Honors) from the
`
`University of Maryland, College Park in 1972 and an M.S. and Ph.D. in Electrical
`
`Engineering from the University of Illinois in 1973 and 1976, respectively.
`
`4.
`
`After receiving my doctorate, I served as a National Research Council
`
`Postdoctoral Research Associate at the United States Naval Research Laboratory
`
`(“NRL”), Optical Sciences Division, in Washington, DC from 1975 to 1976. As a
`
`research physicist in the Laser Physics Branch (Optical Sciences Division) from
`
`1976 to 1979, I made several contributions to the visible and ultraviolet lasers and
`
`laser spectroscopy field, including the co-discovery of the KrCl rare gas-halide
`
`excimer laser and the proton beam pumped laser (Ar-N2, XeF). In 1979, I received
`
`a Research Publication Award for my work at the NRL.
`
`5.
`
`In 1979, I was appointed assistant professor in the Department of
`
`Electrical and Computer Engineering at the University of Illinois. In 1981, I
`
`became associate professor in this same department, and in 1983, I became
`
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`

`
`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`professor in this department. In 1985, I was named the Director of the Laboratory
`
`for Optical Physics and Engineering, and in 2007, I was named the Gilmore Family
`
`Professor of Electrical and Computer Engineering. I continue to hold both
`
`positions today. In addition, I am also Research Professor in the Coordinated
`
`Science Laboratory and the Micro and Nanotechnology Laboratory. I also hold
`
`academic appointments in the Departments of Materials Science and Engineering,
`
`Bioengineering, and Nuclear, Plasma, and Radiological Engineering.
`
`6.
`
`Since joining the faculty of the University of Illinois in 1979, I have
`
`been engaged in research in atomic, molecular and ultrafast laser spectroscopy, the
`
`discovery and development of visible and ultraviolet lasers, and the science and
`
`technology of microcavity plasma devices. My research has been featured in Laser
`
`Focus, Photonics Spectra, Electronics Weekly (UK), the Bulletin of the Materials
`
`Research Society, Microwaves, Optical Spectra, Electro-Optical Systems Design,
`
`Optics and Laser Technology, Electronics, Optics News, Lasers and Optronics,
`
`IEEE Potentials, IEEE Spectrum, and IEEE Circuits and Devices. My work was
`
`highlighted in the National Academy of Sciences report Plasma 2010, published in
`
`2007.
`
`7.
`
`I have made several major contributions to the field of laser physics,
`
`plasma physics, and atomic and molecular physics. I co-invented a new form of
`
`lighting, “light tiles”, that are thin and flat. This culminated in the formation of a
`
`2
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`

`
`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`company called Eden Park Illumination. I discovered numerous ultraviolet, visible
`
`and near-infrared atomic and molecular lasers, including the KrCl ultraviolet
`
`(excimer) laser, the optically-pumped XeF, HgCl, and rare gas lasers and the CdI,
`
`CdBr, ZnI, Li, Fe, and Cd visible and near-infrared lasers. I demonstrated the first
`
`long pulse (> 1 µs) excimer laser and the first lasers (Ar – N2, XeF) pumped by a
`
`proton beam. The excimer lasers are now used world-wide in photolithography,
`
`surgical procedures (such as corneal refractive correction) and micromachining of
`
`materials. I discovered the laser excitation spectroscopy of photoassociation (the
`
`absorption of optical radiation by free atomic pairs) of thermal atoms as a probe of
`
`the structure of transient molecules. I demonstrated with my graduate students the
`
`first ultraviolet and violet glass fiber lasers. I discovered the excimer-pumped
`
`atomic lasers (lasing on the D1 and D2 lines of Na, Cs, and Rb) for laser guide
`
`stars and mesosphere probing by LIDAR. I conducted the first observation (by
`
`laser spectroscopy) of Rydberg series for the rare gas diatomics (Ne2, Ar2, Kr2,
`
`Xe2) and the first measurement of the rotational constants for Ne2 and Ar2, as well
`
`as the vibrational constants for Ne2+. I pioneered the development of microcavity
`
`plasma devices and arrays in silicon, Al/Al2O3, glass, ceramics, and multilayer
`
`metal/polymer structures. For this, I was the recipient of the C.E.K. Mees Award
`
`from Optical Society of America, the Aaron Kressel Award from the Photonics
`
`Society of the IEEE, and the Harold E. Edgerton Award from the International
`
`3
`
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`
`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`Society for Optical Engineering. I was the Fulbright-Israel Distinguished Chair in
`
`the Physical Sciences and Engineering from 2007 to 2008. I am a Fellow of the
`
`American Physical Society, the Optical Society of America, the Institute of
`
`Electrical and Electronics Engineers, the American Association for the
`
`Advancement of Science (AAAS), and the SPIE (International Society for Optical
`
`Engineering.
`
`8.
`
`I taught/teach courses in laser physics, electromagnetics (including
`
`optics, optical waveguides, antennas), plasma physics, semiconductor electronic
`
`devices, electromagnetics, and analog signal processing, among others. I have
`
`directed the dissertations of 47 individuals who received the Ph.D. degree in
`
`Physics, Electrical and Computer Engineering, or Materials Science and
`
`Engineering.
`
`9.
`
`I have also served as Assistant Dean in the College of Engineering,
`
`Associate Dean of the Graduate College, and Associate Vice-Chancellor for
`
`Research.
`
`10.
`
`I have authored or co-authored over 280 peer-reviewed academic
`
`publications in the fields of laser physics, plasma physics, atomic and molecular
`
`physics, and quantum electronics. I have served as Editor-in-Chief of the IEEE
`
`Journal of Quantum Electronics, and am currently Editor-in-Chief of Progress in
`
`Quantum Electronics as well as Associate Editor of Applied Physics Reviews.
`
`4
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`
`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`I am currently a member of four honorary organizations. In 1998, I
`
`11.
`
`served as President of the IEEE Lasers and Electro-Optics Society (LEOS),
`
`following earlier service as a member of the LEOS Board of Governors, and as the
`
`Vice-President for Technical Affairs.
`
`12. From 1996 through 1999, I was the James F. Towey University
`
`Scholar at the University of Illinois. I received the LEOS Distinguished Service
`
`Award, was awarded the IEEE Third Millennium Medal in 2000 and was named a
`
`LEOS Distinguished Lecturer for 2003-2005.
`
`13.
`
`I am a co-founder of Eden Park Illumination (2007) and EP
`
`Purification (2010).
`
`14.
`
`In 2014, I was elected into the National Academy of Engineering, and
`
`the National Academy of Inventors.
`
`15.
`
`I am a named inventor on over seventy (75) United States and
`
`international patents and have patent applications pending both in the United States
`
`and abroad.
`
`16. A copy of my curriculum vitae is attached as Appendix A.
`
`17.
`
`I have reviewed the specification and claims of U.S. Patent No.
`
`9,048,000 (the “’000 patent”; Ex. 1101). I have been informed that the ’000 patent
`
`claims priority to March 31, 2006.
`
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`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`I have also reviewed the following references, all of which I
`
`18.
`
`understand to be prior art to the ’000 patent:
`
` French Patent Publication No. FR2554302A1, published May 3,
`1985 (“Gärtner,” Ex. 1104), with English Translation.
`
` Japanese Patent Publication No. JPS61-193358, published August
`27, 1986 (“Sato,” Ex. 1105), with English Translation.
`
` Arp et al., Feasibility of generating a useful laser-induced
`breakdown spectroscopy plasma on rocks at high pressure:
`preliminary study for a Venus mission, published July 30, 2004
`(“Arp,” Ex. 1106).
`
`19.
`
`I am being compensated ay my normal consulting rate for my work.
`
`
`
`My compensation is not dependent on, and in no way affects, the substance of my
`
`statements in this Declaration.
`
`20.
`
`I have no financial interest in Petitioner. I similarly have no financial
`
`interest in the ’000 patent.
`
`II. LEGAL PRINCIPLES
`21.
`I have been informed that a claim is invalid as anticipated under 35
`
`U.S.C. § 102(a) if “the invention was known or used by others in this country, or
`
`patented or described in a printed publication in this or a foreign country, before
`
`the invention thereof by the applicant for patent.” I have been informed that a
`
`claim is invalid as anticipated under 35 U.S.C. § 102(b) if “the invention was
`
`patented or described in a printed publication in this or a foreign country or in
`
`public use or on sale in this country, more than one year prior to the date of the
`
`6
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`
`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`application for patent in the United States.” I have also been informed that a claim
`
`is invalid as anticipated under 35 U.S.C. § 102(e) if “the invention was described
`
`in … an application for patent, published under section 122(b), by another filed in
`
`the United States before the invention by the applicant for patent ….” It is my
`
`understanding that for a claim to be anticipated, all of the limitations must be
`
`present in a single prior art reference, either expressly or inherently.
`
`22.
`
`I have been informed that a claim is invalid as obvious under 35
`
`U.S.C. § 103(a):
`
`
`
`if the differences between the subject matter sought to be patented 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 [the] subject matter pertains.
`
`35 U.S.C. § 103(a). I understand that a claimed invention would have been
`
`obvious, and therefore not patentable, if the subject matter claimed would have
`
`been considered obvious to a person of ordinary skill in the art at the time that the
`
`invention was made. I understand that when there are known elements that perform
`
`in known ways and produce predictable results, the combination of those elements
`
`is likely obvious. Further, I understand that when there is a predictable variation
`
`and a person would see the benefit of making that variation, implementing that
`
`predictable variation is likely not patentable. I have also been informed that
`
`obviousness does not require absolute predictability of success, but that what does
`
`7
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`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`matter is whether the prior art gives direction as to what parameters are critical and
`
`which of many possible choices may be successful.
`
`III. PERSON OF ORDINARY SKILL IN THE ART
`23. A person of skill in the art at the time of the alleged invention of the
`
`’000 patent 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.
`
`IV. OVERVIEW OF THE ’000 PATENT
`24. The ’000 patent is directed to a laser sustained plasma light source for
`
`use in, for example, testing and inspection for semiconductor manufacturing. As
`
`depicted in Fig. 1 below, the claimed light source includes a pressurized chamber
`
`containing gas (green), an ignition source for ionizing the gas (blue), a laser for
`
`providing energy to the plasma (red), and a plasma-generated light. (’000 patent,
`
`8
`
`

`
`claim 1 (Ex. 1101).)
`
`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`
`
`
`ʼ000 Patent, Figure 1 (Ex. 1101)
`
`25. According to the ’000 patent, prior art light sources relied upon
`
`electrodes to both generate and sustain the plasma, which resulted in wear and
`
`contamination. (’000 patent, 1:45-51 (Ex. 1101).) Thus, a need arose for a way to
`
`sustain plasma without relying on an electrical discharge from electrodes. (’000
`
`patent, 1:55-59 (Ex. 1101).)
`
`26. The alleged invention of the patent family involves using a laser to
`
`sustain the plasma for a light source. The ’000 continuation includes claims that
`
`require a pressurized chamber, the plasma-generated light having a wavelength
`
`greater than 50 nm, and a sapphire window in the chamber.
`
`27. As discussed below, there was nothing new or inventive about
`
`sustaining a plasma with a laser to produce high brightness light. Multiple prior art
`
`references, including Gärtner, Sato, and Arp, disclosed supplying laser energy to
`
`9
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`

`
`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`plasma light sources that included pressurized chambers. Additionally, Gärtner,
`
`Sato, and Arp disclosed the plasma-generated light having a wavelength greater
`
`than 50 nm. Producing and/or sustaining plasmas with pulsed or continuous lasers
`
`was well known decades prior to 2005.
`
`28. Moreover, there was nothing new about using a sapphire window to
`
`transmit laser energy and emitted light. Both Sato and Arp disclosed a plasma
`
`light source with a chamber that implemented a sapphire window to transmit
`
`electromagnetic energy. In addition, Sato and Arp disclosed a laser-sustained
`
`plasma light source configured such that the laser energy enters, and the emitted
`
`light exits, through the sapphire window. It would have been obvious to combine
`
`Sato and Arp with Gärtner to arrive at the claimed invention.
`
`A. Challenged Claims
`
`29. Petitioner challenges claims 7-10 of the ’000 patent. Independent
`
`claim 7 is reproduced below with added letters and numerals in brackets for ease of
`
`reference:
`
`[7p] A laser driven light source comprising:
`
`[7a] 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;
`
`[7b] a laser for providing at least substantially continuous energy
`through the sapphire window to the ionized gas within the pressurized
`
`10
`
`

`
`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`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
`
`[7c] wherein the sapphire window allows the plasma-generated light
`to exit the pressurized chamber.
`
`(’000 patent, claim 7 (Ex. 1101).)
`B.
`
`Summary of the Prosecution History
`
`30. The ’000 patent (Ex. 1101) issued from U.S. Patent Appl. No.
`
`13/964,938, filed on August 12, 2013. The ’000 patent is a continuation of the
`
`’138 patent, which is a CIP of the ’786 patent, which is a CIP of the ’455 patent,
`
`which is a CIP of the ’982 patent, filed March 31, 2006. (See Ex. 1102.) During
`
`prosecution, the Examiner repeatedly rejected the pending claims and applicant’s
`
`arguments that features such as a “pressurized chamber” distinguished the prior art.
`
`(See, e.g., Office Action dated July 17, 2014 at 2-3 (Ex. 1108).)
`
`31. On January 6, 2015, the applicant further amended some, but not all,
`
`of the claims to require a laser having a wavelength “of up to about 2000 nm.”
`
`(Amendment and Response dated Jan. 6, 2015 at 2-6 (Ex. 1109).) Notably,
`
`applicant did not amend claim 7 (then pending claim 13) to recite this limitation.
`
`(Amendment and Response dated Jan. 6, 2015 at 3 (Ex. 1109).)
`
`32. On February 27, 2015, the Examiner indicated that claims reciting “at
`
`least one substantially continuous laser for providing energy within a wavelength
`
`11
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`

`
`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`range of about 700 nm to 2000 nm to an ionized gas to sustain a plasma within a
`
`chamber having greater than atmospheric pressure to produce a plasma-generated
`
`light having wavelengths greater than 50 nm” contained allowable subject matter.
`
`(Office Action dated Feb. 27, 2015 at 7 (Ex. 1110).)
`
`33. On March 25, 2015, the amended claims were allowed. With respect
`
`to challenged claim 7 (then pending claim 13), the Examiner noted in the reason
`
`for allowance that the “prior art fails to disclose at least one substantially
`
`continuous laser for providing energy within a wavelength range of about 700 nm
`
`to 2000 nm to the ionized gas to sustain a plasma within the chamber to produce a
`
`plasma generated light having a wavelength greater than 50 nm, as claimed in
`
`independent claim 1, with similar limitations in independent claims 13 [now
`
`challenged claim 7], 26 and 32.” (Notice of Allowability dated Mar. 25, 2015 at 4
`
`(Ex. 1118).)
`
`34. Challenged claim 7, however, does not in fact recite “providing
`
`energy within a wavelength range of about 700 nm to 2000 nm.” (’000 patent,
`
`claim 7 (Ex. 1101).) Instead, claim 7 merely recites providing laser energy to
`
`“produce plasma-generated light having wavelengths greater than 50 nm,” without
`
`specifying the wavelength of the laser. (’000 patent, claim 7 (Ex. 1101).) The
`
`applicants took no steps to alert the Examiner to this error.
`
`12
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`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`35. The prosecution history of the ’000 patent provides no indication that
`
`the examiner appreciated the significance of Gärtner (submitted on March 11,
`
`2015, several weeks after the Examiner had indicated the claims recite allowable
`
`subject matter) and Sato (submitted months earlier in an IDS along with more than
`
`twenty other references), which disclose providing laser energy to produce plasma-
`
`generated light having wavelengths greater than 50 nm, along with the other
`
`features of claim 7. Nor did the Examiner have the opportunity to consider Arp,
`
`which in combination with Gärtner, discloses each of the limitations of claim 7.
`
`36. As discussed below, Sato in view of Gärtner, and Gärtner in view of
`
`Arp, each render the challenged claims unpatentable as obvious.
`
`V. CLAIM CONSTRUCTION
`A.
`“Light source”
`37. The term “light source” is recited in challenged claim 7. “Light
`
`source” should be construed to mean “a source of electromagnetic radiation in the
`
`extreme ultraviolet (10 nm to 100 nm), vacuum ultraviolet (100 nm to 200 nm),
`
`ultraviolet (200 nm to 400 nm), visible (400 to 700 nm), near-infrared (700 nm to
`
`1,000 nm (1 µm)), middle infrared (1 µm to 10 µm), or far infrared (10 µm to 1000
`
`µm) regions of the spectrum.”
`
`13
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`
`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`38. The ordinary and customary meaning of “light source”1 is a source of
`
`electromagnetic radiation in the extreme ultraviolet (10 nm to 100 nm), vacuum
`
`ultraviolet (100 nm to 200 nm), ultraviolet (200 nm to 400 nm), visible (400 to 700
`
`nm), near-infrared (700 nm to 1,000 nm (1 µm)), middle infrared (1 µm to 10 µm),
`
`or far infrared (10 µm to 1000 µm) regions of the spectrum. (See, e.g., William T.
`
`Silfvast, “Laser Fundamentals” at 4 (“Silfvast”) (Ex. 1109).) The Patent Owner
`
`publishes a data sheet which is consistent with the ordinary and customary
`
`meaning in referring to EUV wavelengths as within the meaning of “light source.”
`
`(See, e.g., Energetiq EQ-10M Data Sheet at 2 (describing Energetiq’s EQ-10
`
`product operating at 13.5 nm as an “EUV [Extreme Ultraviolet] Light Source”)
`
`(Ex. 1107).
`
`39. The ’000 patent does not provide a definition of the term “light
`
`source” and uses the term consistent with the ordinary and customary meaning of
`
`1 The term “light” is sometimes used more narrowly to refer only to visible light.
`
`However, references to “ultraviolet light” in the ’000 patent make clear that the
`
`broader meaning is intended because ultraviolet radiation has a wavelength shorter
`
`than that of visible light. (See, e.g., ’000 patent, 1:51-54, 7:49-51, 12:25-29, 15:6-
`
`9, 16:46-52, 16:65-67, 17:12-14, 18:34-36, 18:42-44, 19:8-10, 19:51-55, 20:26-35,
`
`21:15-20, 22:5-8, 23:28-29, 25:60-64, 26:32-36, 27:21-24, 31:41-46, 32:32-34,
`
`33:17-19, 45:20-35 (Ex. 1101).)
`
`14
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`
`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`the term. The ’000 patent states that parameters such as the wavelength of the light
`
`from a light source will vary depending upon the application. (’000 patent, 1:35-
`
`37 (Ex. 1101).) The specification describes “ultraviolet light” as an example of the
`
`type of light that can be generated: “emitted light 136 (e.g., at least one or more
`
`wavelengths of ultraviolet light).” (’000 patent, 18:34-36 (Ex. 1101); see also id.
`
`at 17:12-14, 18:42-44. 20:24-26, 21:18-20, 23:28-29, 25:60-64, 26:32-36, 27:21-
`
`24, 33:17-19.)
`
`40. Therefore, the term “light source” should be construed to mean “a
`
`source of electromagnetic radiation in the extreme ultraviolet (10 nm to 100 nm),
`
`vacuum ultraviolet (100 nm to 200 nm), ultraviolet (200 nm to 400 nm), visible
`
`(400 to 700 nm), near-infrared (700 nm to 1,000 nm (1µm)), middle infrared (1 µm
`
`to 10 µm), or far infrared (10 µm to 1000 µm) regions of the spectrum.”
`
`B.
`Ignition source for ionizing a gas within the chamber
`41. The term “ignition source for ionizing a gas within the chamber” is
`
`recited in challenged claim 7. Dependent claim 9 additionally recites “the ignition
`
`source comprises or includes 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.” Therefore, for purposes of this proceeding, the broadest reasonable
`
`interpretation of the term “ignition source for ionizing a gas within the chamber” as
`
`15
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`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`recited in claim 7, in view of claim 9, includes “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.”2
`
`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`42. Challenged claims 7-10 of the ’000 patent claim features that were
`
`known in the art prior to the earliest priority date, and are obvious in view of the
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`prior art.
`
`A. Laser Sustained Plasma Light Sources Were Known Long Before
`the Priority Date of the ’000 Patent
`43. When the application that led to the ’000 patent was filed, there was
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`nothing new or inventive about a light source using an ignition source to generate a
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`plasma in a pressurized chamber and a laser to sustain the plasma to produce
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`plasma generated light with a wavelength over 50 nm. This concept had been
`
`
`2 Claim 7 separately recites “an ignition source for ionizing a gas within the
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`chamber” and “a laser for providing at least substantially continuous energy.”
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`Claim 9 further recites “the ignition source comprises or includes … the laser.”
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`Petitioners reserve the right to assert in district court proceedings that claim 9 is
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`invalid for lack of written description, and that claim 7 and other claims reciting an
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`ignition source require a separate “ignition source” and “laser.”
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`16
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`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`known and widely used since at least as early as the 1980s, more than two decades
`
`before the application date.
`
`44. For example, on February 22, 1985, Sato filed Japanese Patent No.
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`JPS61-193358 entitled “Light Source Device.” Sato describes a laser sustained
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`plasma light source apparatus producing plasma generated light. Sato is also
`
`directed to the same problem as the ’000 patent, namely, providing a light source
`
`that does not require electrodes to generate and sustain a plasma, as is the case in
`
`traditional arc lamps. (Compare Sato at 2 (“In the light source device according to
`
`the present invention, there are no electrodes within the tube bulb, so there is no
`
`change in the intensity of light production nor in the spectrum due to the effects of
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`evaporation or sputtering thereof, making it possible to produce a long service
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`life[.]”)(Ex. 1105) with ’000 patent, 1:38-56 (“The state of the art . . . involves []
`
`use of xenon or mercury arc lamps [that use an anode and cathode to excite gas
`
`located in a chamber of the lamp]. [T]he anode and/or cathode are prone to wear
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`and may emit particles that can contaminate the light source or result in failure of
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`the light source. . . . A need [] exists for improved high brightness light sources
`
`that do not rely on an electrical discharge to maintain a plasma that generates a
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`high brightness light.”) (Ex. 1101).)
`
`45. Sato proposes the same basic solution as the ’000 patent: (1) a sealed
`
`pressurized chamber and (2) a laser that generates a plasma and provides energy
`
`17
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`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`that sustains a plasma providing plasma-generated light. (Compare Sato at 2-3,
`
`Fig. 1 (Ex. 1105) with ’000 patent, 2:5-22, Fig. 1; 17:58-62 (“In one embodiment,
`
`no ignition source 140 is required and instead the laser source 104 is used to ignite
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`the ionizable medium and to generate the plasma 132 and to sustain the plasma and
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`the high brightness light 136 emitted by the plasma 132.”) (Ex. 1101).) For
`
`example, as shown below, Figure 1 of Sato depicts a “tube bulb 5” that is filled
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`with “a noble gas such as Xe” (green); “laser oscillator 1” (red) which generates
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`the plasma (yellow) and sustains the plasma, producing a plasma-generated light.
`
`(Sato at 2, Fig. 1 (Ex. 1105).)
`
`
`
`’000 patent, Fig. 1 (Ex. 1101)
`
`
`
`
`
`Sato, Fig. 1 (Ex. 1104)
`
`
`
`46. Even earlier, in 1983, Gärtner filed a patent application entitled
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`“Radiation source for optical devices, notably for photolithographic reproduction
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`systems,” which published on May 3, 1985 as French Patent Application No.
`
`2554302. (Gärtner, Ex. 1104).
`
`47. Gärtner is directed to the same problem as the ’000 patent, namely,
`
`producing light that is brighter than that produced by conventional arc lamps for
`
`applications such as illuminating features of a semiconductor wafer. (Compare
`
`18
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`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`Gärtner at 1:2-4 (“It is preferably applied in cases where a radiated power is
`
`required which is greater than that from pressurised mercury vapour lamps, such as
`
`in photolithographic appliances for illuminating a photoresist layer on a
`
`semiconductor wafer.”) (Ex. 1104) with ’000 patent, 1:38-56 (“The state of the art
`
`in, for example, wafer inspection systems involves the use of xenon or mercury arc
`
`lamps to produce light. . . . [T]hese arc lamps do not provide sufficient brightness
`
`for some applications, especially in the ultraviolet spectrum. . . . Accordingly, a
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`need therefore exists for improved high brightness light sources.”) (Ex. 1101).)
`
`48. Gärtner proposes the same basic solution as the ’000 patent: (1) a
`
`sealed chamber 1 (green); (2) an ignition source – pulsed laser 10 (blue), which
`
`generates a plasma 14 (yellow); and (3) a continuous (CW) or pulsed laser to
`
`produce light – laser 9 (red), which provides energy to the plasma 14 (yellow) and
`
`produces light 15 having a wavelength greater than 50 nm. (Gärtner at 4-5, Fig. 1
`
`(Ex. 1104).)
`
`19
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`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`
`’000 patent, Fig. 1 (Ex. 1101)
`
`
`
`
`
`
`
`
`
`Gärtner, Fig. 1 (Ex. 1104)
`
`49. Gärtner also teaches embodiments where the laser 9 both generates
`
`and sustains the plasma. (Compare Gärtner at 5:12-14 (Ex. 1104) with ’000 patent,
`
`17:58-62 (Ex. 1101).) Gärtner teaches the light source can be used “in
`
`photolithographic appliances for illuminating a photoresist layer on a
`
`semiconductor wafer.” (Gärtner at 1:1-4 (Ex. 1104).)
`
`B.
`
`Implementing a sapphire window to transmit laser energy and
`emitted light was well known in the art
`50. Light sources using chambers with sapphire windows were known to
`
`have several advantages relative to quartz windows, such as higher tensile strength,
`
`broader emission spectrum, and the ability to more effectively transmit light. The
`
`review by G. C. Wei (Journal of Physics D, 3057 (2005)) (Ex. 1129) is one
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`20
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`

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`U.S. Patent 9,048,000
`Declaration of J. Gary Eden, Ph.D.
`example of a publication that describes the attractive characteristics of sapphire as
`
`a window material (See infra at VII.A.1.e).)
`
`51. Gärtner’s chamber includes transparent windows to allow laser energy
`
`and emitted light to pass. (Gärtner at 4:34-5:2, 5:28-30, 6:9-16; Figs. 1-4 (Ex.
`
`1104).) Gärtner notes that the windows could be made out of quartz (id. at 5:27-
`
`28, 5:34-6:2, 6:6-7), as the material was commonly used during the 1970s and
`
`1980s due to its performance and cost-effectiveness. Although sapphire windows
`
`had several known advantages, sapphire windows at the time were generally
`
`smaller in size (because of the challenge of growing large sapphire crystals), ha