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 IPR2016-00566
`
`
`
`DECLARATION OF J. GARY EDEN, PH.D.
`REGARDING U.S. PATENT NO. 8,525,138
`CLAIMS 21, 25, AND 27
`
`
`
`
`
`
`
`ASML 1203
`
`

`
`U.S. Patent 8,525,138
`Declaration of J. Gary Eden, Ph.D.
`TABLE OF CONTENTS
`
`Page
`
`V. 
`
`B. 
`
`C. 
`
`BACKGROUND ............................................................................................. 1 
`I. 
`LEGAL PRINCIPLES ..................................................................................... 6 
`II. 
`PERSON OF ORDINARY SKILL IN THE ART .......................................... 8 
`III. 
`IV.  OVERVIEW OF THE ’138 PATENT ............................................................ 8 
`A. 
`Summary of the Prosecution History .................................................. 13 
`CLAIM CONSTRUCTION .......................................................................... 17 
`A. 
`“Light source” ..................................................................................... 17 
`VI.  THE CHALLENGED CLAIMS ARE INVALID ......................................... 20 
`A. 
`Laser-Sustained Light Sources Were Known Long Before the
`Priority Date of the ’138 Patent........................................................... 20 
`Sustaining a plasma with a laser operating within 10 nm of a
`strong absorption line was well known in the art. ............................... 21 
`Using an optical element in a light source to modify a first
`spectrum to a second spectrum was well known in the art. ................ 26 
`VII.  GROUNDS FOR FINDING THE CHALLENGED CLAIMS INVALID ... 27 
`A.  Ground 1: Claims 21, 25 and 27 are Unpatentable Over Gärtner
`in View of Beterov and Garcia ............................................................ 28 
`(a)  Gärtner, Beterov, and Garcia are each prior art that was not
`considered by the Patent Office during examination. .................. 28 
`(b)  Independent Claim 21 is Unpatentable Over Gärtner in View of
`Beterov and Garcia ....................................................................... 29 
`(c)  Dependent Claims 25 and 27 are Unpatentable over Gärtner in
`view of Beterov and Garcia .......................................................... 39 
`(d)  Reasons to Combine for claims 21, 25 and 27 ............................. 40 
`Ground 2: Claims 21, 25 and 27 are Unpatentable Over Gärtner
`in View of Wolfram and Garcia .......................................................... 52 
`(a)  Gärtner, Wolfram, and Garcia are each prior art that was not
`considered by the Patent Office during examination. .................. 52 
`(b)  Independent Claim 21 is Unpatentable Over Gärtner in View of
`Wolfram and Garcia ..................................................................... 53 
`
`B. 
`
`i
`
`

`
`U.S. Patent 8,525,138
`Declaration of J. Gary Eden, Ph.D.
`(c)  Dependent Claims 25 and 27 are Unpatentable over Gärtner in
`view of Wolfram and Garcia ........................................................ 55 
`(d)  Reasons to Combine for clams 21, 25 and 27 .............................. 56 
`VIII.  RESPONSE TO ARGUMENTS RAISED BY PATENT OWNER IN ITS
`PRELIMINARY INJUNCTION MOTION .................................................. 57 
`A. 
`Patent Owner’s Arguments Regarding the Content of the Prior
`Art ........................................................................................................ 57 
`Patent Owner’s Arguments Regarding Objective Indicia of
`Non-Obviousness ................................................................................ 59 
`IX.  AVAILABILITY FOR CROSS-EXAMINATION ...................................... 60 
`X. 
`RIGHT TO SUPPLEMENT .......................................................................... 60 
`XI. 
`JURAT ........................................................................................................... 61 
`
`B. 
`
`ii
`
`

`
`U.S. Patent 8,525,138
`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 this 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
`
`1
`
`

`
`U.S. Patent 8,525,138
`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, and I hold
`
`academic appointments at the University of Illinois 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
`
`also 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
`
`2
`
`

`
`U.S. Patent 8,525,138
`Declaration of J. Gary Eden, Ph.D.
`lighting, “light tiles”, that are thin and flat. This culminated in the formation of a
`
`company known as 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 worldwide
`
`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 the Optical Society of America, the
`
`3
`
`

`
`U.S. Patent 8,525,138
`Declaration of J. Gary Eden, Ph.D.
`Aaron Kressel Award from the Photonics Society of the IEEE, and the Harold E.
`
`Edgerton Award from the International 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 290 peer-reviewed academic
`
`publications in the fields of laser physics, plasma physics, atomic and molecular
`
`physics, quantum electronics. I have served as Editor-in-Chief of the IEEE
`
`Journal of Quantum Electronics, and Editor-in-Chief of Progress in Quantum
`
`4
`
`

`
`U.S. Patent 8,525,138
`Declaration of J. Gary Eden, Ph.D.
`Electronics. I am currently serving as an Associate Editor of Applied Physics
`
`Reviews.
`
`11.
`
`I am currently a member of four honorary organizations. In 1998, I
`
`served as President of the IEEE Lasers and Electro-Optics Society (LEOS – now
`
`known as the IEEE Photonics Society), 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. In 2005, I received the IEEE/LEOS
`
`Aron Kressel Award. I was awarded the C.E.K. Mees Medal of the Optical
`
`Society of America in 2007, and was the recipient of the Fulbright-Israel
`
`Distinguished Chair in the Natural Sciences and Engineering for 2007-2008.
`
`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 ninety (90) United States and
`
`international patents and have patent applications pending both in the United States
`
`and abroad.
`
`5
`
`

`
`U.S. Patent 8,525,138
`Declaration of J. Gary Eden, Ph.D.
`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.
`
`8,525,138 (the “’138 patent”; Ex. 1201). I have been informed that the ’138 patent
`
`claims priority to U.S. Application No. 11/395,523, filed on March 31, 2006, now
`
`U.S. Patent No. 7,435,982 (the “’982 patent”).
`
`18.
`
`I have also reviewed the following references, all of which I
`
`understand to be prior art to the ’138 patent:
`
` French Patent Publication No. FR2554302A1, published May 3, 1985
`with English Translation (“Gärtner,” Ex. 1204).
`
` I.M. Beterov et al., “Resonance radiation plasma (photoresonance
`plasma),” Sov. Phys. Usp. 31 (6), 535 (1988) (“Beterov,” Ex. 1206).
`
` U.S. Pat. No. 4,901,330, filed July 20, 1988 (“Wolfram,” Ex. 1217),
`issued Feb. 13, 1990.
`
` U.S. Pat. No. 5,905,268, filed Apr. 21, 1997 (“Garcia,” Ex. 1225),
`issued May 18, 1999.
`
`19.
`
`I am being compensated at my normal consulting rate for my work.
`
`20. My compensation is not dependent on and in no way affects the
`
`substance of my statements in this Declaration.
`
`21.
`
`I have no financial interest in Petitioners. I similarly have no financial
`
`interest in the ’138 patent.
`
`II. LEGAL PRINCIPLES
`22.
`I have been informed that a claim is invalid as anticipated under Pre-
`
`AIA 35 U.S.C. § 102(a) if “the invention was known or used by others in this
`
`6
`
`

`
`U.S. Patent 8,525,138
`Declaration of J. Gary Eden, Ph.D.
`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 also been
`
`informed that a claim is invalid as anticipated under Pre-AIA 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 application for patent in the United States.” Further I have been
`
`informed that a claim is invalid as anticipated under Pre-AIA 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.
`
`23.
`
`I have been informed that a claim is invalid as obvious under Pre-AIA
`
`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.
`
`24.
`
`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
`
`7
`
`

`
`U.S. Patent 8,525,138
`Declaration of J. Gary Eden, Ph.D.
`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
`
`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
`25. A person of skill in the art at the time of the alleged invention of the
`
`’138 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 ’138 PATENT
`26. The ’138 patent family 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, shown below, the light source claimed in the
`
`’138 patent includes a pressurized chamber (green) containing gas, an ignition
`
`8
`
`

`
`U.S. Patent 8,525,138
`Declaration of J. Gary Eden, Ph.D.
`source (blue) for igniting a plasma, and a laser (red) for providing energy to the
`
`plasma (yellow) to produce light. (’138 patent, claim 1 (Ex. 1201).)
`
`
`
`’138 Patent, Fig. 1 (Annotated)
`
`27. According to the ’138 patent, prior products relied upon the electrodes
`
`used for ignition to also sustain the plasma, which resulted in wear and
`
`contamination. (’138 patent, 1:33-49 (Ex. 1201).) Thus, a need allegedly arose for
`
`a way to sustain plasma without relying on an electrical discharge. (Id. at 1:50-54.)
`
`28. With respect to igniting the plasma, the specification of the ’138
`
`patent states that the “ignition source can be or can include electrodes, 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, or a pulsed lamp.” (’138 patent, 2:48-51 (Ex. 1201).) The claims were
`
`limited by amendment to embodiments in which the ignition source comprises
`
`electrodes. (Infra IV) However, the specification does not identify any purported
`
`9
`
`

`
`U.S. Patent 8,525,138
`Declaration of J. Gary Eden, Ph.D.
`advantages of electrodes as compared with other ignition sources, nor does the
`
`patent identify anything inventive about using electrodes as an ignition source as
`
`compared with other types of ignition sources.
`
`29. The alleged invention involves using a laser to provide energy to
`
`sustain the plasma for a light source. The ’138 patent is a continuation-in-part that
`
`adds the requirement that the laser be configured to operate at a wavelength within
`
`10 nm of a “strong absorption line.” (’138 patent, 10:47-60 (Ex. 1201).) The ’138
`
`patent does not define the term “strong absorption line.”1 Rather, it identifies “980
`
`nm, 895 nm, 882, nm, or 823 nm” as examples of strong absorption lines. (Id. at
`
`34:23-25.) Table 1 below shows the 823 nm (8232 Å), 882 nm (8819 Å), and 980
`
`nm (9800 Å) absorption lines of xenon, which the ’138 patent identifies as strong
`
`absorption lines. The 992 nm line is also a strong absorption line of xenon because
`
`it is listed in Table 1 of the ’138 patent with a higher absorption than either the 823
`
`or 980 lines. (Id. at Table 1.) As noted in the table, these measurements of
`
`absorption lines of xenon were published by Lothar Klein in 1968. (See Lothar
`
`Klein, “Measurements of Spectral Emission and Absorption of a High Pressure
`
`1 In an infringement proceeding in which the required strength of the absorption
`
`line were at issue, claims reciting “strong absorption line” would be invalid under
`
`35 U.S.C. § 112, second paragraph for indefiniteness because the patent does not
`
`specify how strong the absorption must be.
`
`10
`
`

`
`U.S. Patent 8,525,138
`Declaration of J. Gary Eden, Ph.D.
`Xenon Arc in the Stationary and the Flashed Modes,” Applied Optics, Vol. 7, No.
`
`4, 677, 683 (1968) (Ex. 1221).)
`
`
`
`30. The ’138 patent notes that the strong absorption lines at 980 nm and
`
`882 nm in xenon are based on transitions between the 6s energy levels and the 6p
`
`energy levels. (’138 patent, 35:28-32 (Ex. 1201).) The other “strong absorption
`
`lines” of xenon identified in Table 1 (823 nm and 992 nm) are also based on
`
`transitions from the 6s energy levels to the 6p energy levels. (See, e.g., E. B.
`
`Saloman, “Energy Levels and Observed Spectral Lines of Xenon, XeI through
`
`XeLIV,” J. Phys. Chem. Ref. Data, Vol. 33, No. 3 (2004) at 789-90 (Ex. 1219).) A
`
`person of skill in the art would understand that an atomic transition from the 6s
`
`energy levels to the 6p energy levels of a xenon atom involves moving an electron
`
`11
`
`

`
`U.S. Patent 8,525,138
`Declaration of J. Gary Eden, Ph.D.
`of the xenon atom from one of the lowest two excited states of the atom to the third
`
`lowest group of excited states.
`
`31. The ’138 patent also states that some applications for its light source,
`
`such as a spectrometer, can use light detectors that are sensitive in a specific
`
`wavelength range. (’138 patent, 44:64-65 (Ex. 1201).) High brightness light from
`
`the light source in the most sensitive wavelength range of the detector can
`
`allegedly saturate the detector, which can result in the optical system not being
`
`able to take advantage of light outside the detector’s most sensitive wavelength
`
`range, e.g., in the deep ultraviolet range. (Id. at 44:65-45:7). “In other words, the
`
`high radiance in a less useful part of the wavelength spectrum can result in an
`
`inability to use the high radiance in the useful part of the spectrum.” (Id. at 45:7-9).
`
`32.
`
`In response to this alleged problem, the ’138 patent proposes that an
`
`optical element be disposed within the path of the high brightness light in order to
`
`modify a first spectrum of the high brightness light to a second spectrum. (Id. at
`
`45:10-17). The optical element can be a prism, a “weak” lens, a “strong” lens, or a
`
`dichroic filter. (Id. at 45:17-19). The second spectrum can have a relatively greater
`
`intensity of light in the ultraviolet range than the first spectrum. (Id. at 45:19-22).
`
`The optical element can also increase the intensity of light at certain wavelengths
`
`relative to the intensity of light at certain other wavelengths. (Id. at 45:23-25).
`
`12
`
`

`
`U.S. Patent 8,525,138
`Declaration of J. Gary Eden, Ph.D.
`33. As discussed below, sustaining a plasma with a laser to produce light
`
`was not new at the time of the alleged invention of the ’138 patent. Multiple prior
`
`art references, including Gärtner, Beterov, and Wolfram disclosed laser-sustained
`
`plasma light sources with the same elements as the ’138 patent: a chamber, an
`
`ignited plasma, and a laser providing energy to a plasma to produce light.
`
`34. Additionally, there was nothing new or inventive about operating the
`
`laser at a wavelength near a strong absorption line. For example, Beterov
`
`disclosed tuning a laser onto or near a wavelength corresponding to a strong
`
`absorption line of a gas. Similarly, Wolfram disclosed tuning a laser to a
`
`wavelength within 2 nm of the peak of a strong absorption line of an active
`
`medium or lasant material such as ions of chromium, titanium, or one of the rare
`
`earth elements.
`
`35. Furthermore, there was nothing new or inventive about using an
`
`optical element to modify a first spectrum of a high brightness light to a second
`
`spectrum. For example, Garcia discloses examples of optical elements that can
`
`modify spectra in this manner, such as dichroic filters.
`
`A.
`
`Summary of the Prosecution History
`
`36. The ’138 patent issued from U.S. Patent Appl. No. 13/024,027, filed
`
`on February 9, 2011. The ’138 patent is a continuation-in-part of U.S. Patent No.
`
`13
`
`

`
`U.S. Patent 8,525,138
`Declaration of J. Gary Eden, Ph.D.
`7,989,786 (“the ’9786 patent”), which is a continuation-in-part of the ’455 patent,
`
`which is a continuation-in-part of the ’982 patent, filed March 31, 2006.
`
`37. On July 10, 2012, the PTO issued an office action in which the claims
`
`were rejected. Claim 1 was rejected under 35 U.S.C. § 112, second paragraph, as
`
`being indefinite because the term “high” (in the phrase “high brightness light”) was
`
`a relative term and not defined. (Office Action, dated July 10, 2012, at 2 (Ex.
`
`1209).) Claims 1-8 were rejected under 35 U.S.C. § 102(b) as being anticipated by
`
`Cheymol U.S. Patent Application No. 2006/039435 (“Cheymol”) and Kusunose
`
`U.S. Patent Application No. 2002/0080834 (“Kusunose”). (Id. at 2-5).
`
`38. On November 8, 2012, the applicant submitted a response. In
`
`response to the 35 U.S.C. § 112 rejection, the applicant argued unsuccessfully that
`
`“high” was not indefinite based on examples in the specification. (Response to
`
`Non-Final Office Action, dated Nov. 8, 2012, at 2-3 (Ex. 1210).) In response to
`
`the 35 U.S.C. § 102 rejections, applicant tried unsuccessfully to distinguish
`
`Cheymol and Kusunose based on their use of an extreme ultraviolet light source,
`
`among other purported distinctions. (Id. at 3-10.)
`
`39. On December 12, 2012, the PTO issued a final office action in which
`
`the Examiner maintained the 35 U.S.C § 112 rejection, stating that “there is no
`
`explicit definition of how bright is a high brightness light source.” (Office Action
`
`Summary, dated Dec. 12, 2012, at 2 (Ex. 1211).) The Examiner also maintained
`
`14
`
`

`
`U.S. Patent 8,525,138
`Declaration of J. Gary Eden, Ph.D.
`the 35 U.S.C. § 102 rejections in light of Cheymol and Kusunose, noting that there
`
`was no reason why an extreme ultraviolet light could not be a high brightness light
`
`and that both references disclosed ignition sources. (Id. at 4-7).
`
`40. On April 12, 2013, the applicant filed an amendment in which claim 1
`
`was amended, the other claims were withdrawn, and new claims were added.
`
`(Amendment After Final Office Action, dated April 12, 2013, at 2 (Ex. 1212).)
`
`The applicant removed the high brightness light language. The applicant also
`
`added language requiring a laser at a wavelength within 10 nm of a strong
`
`absorption line for producing a substantially continuous, plasma-generated light,
`
`as well as the chamber being pressurized, and an ignition source comprising
`
`electrodes. Amended claim 1 is shown below:
`
`
`
`(Id. at 2). The applicant then sought to distinguish the newly amended claims from
`
`the prior art. (Id. at 7-9).
`
`41. The applicant also added claims 68, 72, and 74, which correspond to
`
`issued claims 21, 25, and 27, as part of this amendment. In its remarks, applicant
`
`15
`
`

`
`U.S. Patent 8,525,138
`Declaration of J. Gary Eden, Ph.D.
`sought to distinguish claim 68 from the prior art because it included “an ignition
`
`source that includes electrodes for exciting the gas, that the light is generated in a
`
`pressurized chamber, and that the laser provides energy at a wavelength within 10
`
`nm of an absorption line of the excited gas to sustain and produce the plasma-
`
`generated light.” (Id. at 9).
`
`42. On May 6, 2013, the newly amended claims were allowed. The
`
`Notice of Allowance stated that the prior art did not disclose a continuously
`
`sustained plasma and a wavelength within 10 nm of a strong absorption line.
`
`(Notice of Allowability dated May 6, 2013, at 4-5 (Ex. 1213).) The Examiner
`
`Initiated Interview Summary also noted that the claims were allowed after removal
`
`of the “high brightness” light language, to overcome the 35 U.S.C. § 112 rejection.
`
`(Examiner-Initiated Interview Summary, dated April 29, 2013 (Ex. 1224).) The
`
`’138 patent issued on September 3, 2013 (’138 patent (Ex. 1201).)
`
`43. The independent claim features identified in the Notice of
`
`Allowability as missing from the prior art are present in the prior art used in the
`
`proposed grounds of unpatentability, as the Board recognized in its Decision on
`
`Institution in an IPR directed to the same patent. (Case No. IPR2015-01368 at 11
`
`(PTAB Nov. 30, 2015) (Paper 11) (instituting on claims including independent
`
`claim 1).)
`
`16
`
`

`
`U.S. Patent 8,525,138
`Declaration of J. Gary Eden, Ph.D.
`
`V. CLAIM CONSTRUCTION
`44.
`I have applied the “broadest reasonable interpretation” standard in
`
`proposing the claim constructions below. However, based on my reading of the
`
`’943 patent’s specification and the ordinary meanings of the claim terms, the prior
`
`art teaches each claim limitation under any reasonable interpretation of the claim
`
`terms. My analysis is not dependent on application of the “broadest reasonable
`
`interpretation” standard.
`
`A.
`“Light source”
`45. The term “light source” is recited in challenged claim 21. “Light
`
`source” should be construed to mean “a source of electromagnetic radiation in the
`
`ultraviolet (“UV”), extreme UV, vacuum UV, visible, near infrared, middle
`
`infrared, or far infrared regions of the spectrum, having wavelengths within the
`
`range of 10 nm to 1,000 μm,” as the Board construed the term in its Decision on
`
`Institution in an IPR directed to the same patent. (Case No. IPR2015-01368 at 5
`
`(PTAB Nov. 30, 2015) (Paper 11).)
`
`17
`
`

`
`U.S. Patent 8,525,138
`Declaration of J. Gary Eden, Ph.D.
`46. The ordinary and customary meaning of “light source”2 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 1,000 µm) regions of the spectrum. (See, e.g., William T.
`
`Silfvast, Laser Fundamentals, at 4 (2d ed. 2003) (“Silfvast”) (Ex. 1208).) The
`
`Patent Owner publishes a data sheet which is consistent with the ordinary and
`
`customary meaning in that it includes extreme ultraviolet within the meaning of
`
`“light source.” (See, e.g., EQ-10M Data Sheet (describing Energetiq’s EQ-10
`
`“EUV [Extreme Ultraviolet] Light Source” product operating at 13.5 nm, which is
`
`in the ultraviolet range) (Ex. 1207).)
`
`47. Consistent with the ordinary and customary meaning of “light
`
`source,” the ’138 patent states that parameters such as the wavelength of the light
`
`from a light source vary depending upon the application. (’138 patent, 1:30-32
`
`(Ex. 1201).) The specification describes “ultraviolet light” as an example of the
`
`type of light that can be generated: “In some embodiments, the high brightness
`
`2 The term “light” is sometimes used more narrowly to refer only to visible light.
`
`However, references to “ultraviolet light” in the ’138 patent make clear that the
`
`broader meaning is intended. (See, e.g., ʼ138 patent, 7:40-43; 17:2; 18:25, 32;
`
`21:7; 23:22; 26:27 (Ex. 1201).)
`
`18
`
`

`
`U.S. Patent 8,525,138
`Declaration of J. Gary Eden, Ph.D.
`light 636 includes ultraviolet light.” (’138 patent, 20:20-21 (Ex. 1201); see also id.
`
`at 17:1-4 (discussing the ultraviolet light 136 generated by the plasma 132 of the
`
`light source).)
`
`48. Notably, during prosecution, the Examiner concluded that high
`
`brightness light includes extreme ultraviolet (EUV) light. (Office Action
`
`Summary, dated December 12, 2012, at 2 (“[A]pplicant has failed to distinguish in
`
`either the claims, or in the specification (for the reasons stated above) that EUV is
`
`not a high brightness light source.”) (Ex. 1211).)
`
`49. Therefore, the term “light source” should be construed to mean “a
`
`source of electromagnetic radiation in the ultraviolet (“UV”), extreme UV, vacuum
`
`UV, visible, near infrared, middle infrared, or far infrared regions of the spectrum,
`
`having wavelengths within the range of 10 nm to 1,000 μm.”3
`
`
`3 The particular construction for the claim term “light source” was adopted by the
`
`Board in the Decision granting Institution of Inter Partes Review for claims 1-5 of
`
`the ’138 patent. (Case No. IPR2015-01368 at 5 (PTAB Nov. 30, 2015) (Paper
`
`11).) This construction is equivalent to the Petitioner’s prior proposed construction
`
`for the term “light source” in the prior Petition for inter partes review of the ’138
`
`patent and Petitions for inter partes review of the other patents in the patent family
`
`of continuation, continuation in part, and divisional applications.
`
`19
`
`

`
`U.S. Patent 8,525,138
`Declaration of J. Gary Eden, Ph.D.
`VI. THE CHALLENGED CLAIMS ARE INVALID
`A. Laser-Sustained Light Sources Were Known Long Before the
`Priority Date of the ’138 Patent
`50. The concept of using a laser to sustain a plasma for a light source had
`
`been known at least as early as the 1980’s, several decades before the application
`
`date.
`
`51. For example, in 1983, Gärtner filed a patent application entitled
`
`“Radiation source for optical devices, notably for photolithographic reproduction
`
`systems,” which published on May 3, 1985 as French Patent Application No.
`
`2554302. (“Gärtner,” Ex. 1204.) As shown in Fig. 1, reproduced below, Gärtner
`
`disclosed a light source with the same features claimed in the ’138 patent: (1) a
`
`chamber 1 (green); (2) an ignition source – pulsed laser 10 (blue), which generates
`
`a plasma 14 (yellow); and (3) a laser to produce light – laser 9 (r