UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`
`
`
`ASML Netherlands B.V., ASML US Inc., Excelitas Technologies Corp., and
`Qioptiq Photonics GmbH & Co. KG,
`Petitioners
`
`v.
`
`Energetiq Technology, Inc.,
`Patent Owner.
`
`Case IPR2016-00688
`
`
`
`DECLARATION OF J. GARY EDEN, PH.D.
`REGARDING U.S. PATENT NO. 8,969,841
`CLAIMS 4, 5, 6, 8, and 26
`
`ASML 1203
`
`
`
`
`
`

`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`TABLE OF CONTENTS
`
`Page
`
`V. 
`
`B.
`
` 
`
`BACKGROUND ............................................................................................. 1 
`I. 
`LEGAL PRINCIPLES ..................................................................................... 7 
`II. 
`PERSON OF ORDINARY SKILL IN THE ART .......................................... 8 
`III. 
`IV.  OVERVIEW OF THE ’841 PATENT .......................................................... 10 
`Summary of the Prosecution History .................................................. 12 
`A.
` 
`CLAIM CONSTRUCTION .......................................................................... 15 
`“Light source” ..................................................................................... 15 
`A.
` 
`“Laser Driven Light Source” ............................................................... 17 
`B.
` 
`“Substantially continuous laser” ......................................................... 19 
`C.
` 
`VI.  THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 19 
`Laser Sustained Plasma Light Sources Were Known Long
`A.
` 
`Before the Priority Date of the ’841 Patent ......................................... 20 
`Sustaining a plasma with a laser at various wavelengths,
`including in the range of 700-2000 nm, was well known in the
`art ......................................................................................................... 21 
`VII.  GROUNDS FOR FINDING THE CHALLENGED CLAIMS INVALID ... 34 
`  Ground 1: Claims 4, 5, 6, 8, and 26 Are Unpatentable Over
`A.
`Gärtner in View of Mourou and Silfvast ............................................. 34 
`1. 
`Independent Claim 1 .................................................................... 35 
`2.  Dependent Claim 4 ....................................................................... 56 
`3.  Dependent Claim 5 ....................................................................... 56 
`4.  Dependent Claim 6 ....................................................................... 57 
`5.  Dependent Claim 8 ....................................................................... 58 
`6.  Dependent Claim 26 ..................................................................... 58 
`7.  Reasons to Combine for Claims 4-6, 8, and 26 ............................ 59 
`Ground 2: Claims 4-6, 8, and 26 Are Unpatentable Over
`Gärtner in View of Kensuke and Silfvast ........................................... 59 
`1. 
`Independent Claim 1 .................................................................... 60 
`2.  Dependent Claim 4 ....................................................................... 70 
`
`B.
`
` 
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`3.  Dependent Claim 5 ....................................................................... 70 
`4.  Dependent Claim 6 ....................................................................... 70 
`5.  Dependent Claim 8 ....................................................................... 71 
`6.  Dependent Claim 26 ..................................................................... 71 
`7.  Reasons to Combine for Claims 4-6, 8, and 26 ............................ 72 
`VIII.  RESPONSE TO ARGUMENTS RAISED BY PATENT OWNER
`REGARDING OBJECTIVE INDICIA OF NON-OBVIOUSNESS ............ 72 
`IX.  AVAILABILITY FOR CROSS-EXAMINATION ...................................... 73 
`X. 
`RIGHT TO SUPPLEMENT .......................................................................... 74 
`XI. 
`JURAT ........................................................................................................... 75 
`
`
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`ii
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`U.S. Patent 8,969,841
`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
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`professor in this department. In 1995, 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
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`

`
`U.S. Patent 8,969,841
`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 8,969,841
`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
`
`4
`
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`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`of Quantum Electronics, and Editor-in-Chief of Progress in Quantum 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 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`A copy of my curriculum vitae is attached as Appendix A.
`
`I have reviewed the specification and claims of U.S. Patent No.
`
`16.
`
`17.
`
`8,969,841 (“the ’841 patent,” Ex. 1201). I have been informed that the ’841 patent
`
`claims priority, among others, 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 ’841 patent:
`
` French Patent Publication No. FR2554302A1, published May 3, 1985
`(“Gärtner,” Ex. 1204), with English Translation, and is prior art to the
`ʼ841 patent under 35 U.S.C. § 102(b).
`
` Int’l Publication WO-2004097520, published November 11, 2004
`(“Mourou,” Ex. 1214); prior art to the ʼ841 patent under 35 U.S.C. §
`102(b).
`
` Japanese Patent Publication No. 2006010675A, filed on February 24,
`2005 and published January 12, 2006 (“Kensuke,” Ex. 1205), with
`English Translation, and is prior art to the ʼ841 patent under 35 U.S.C.
`§§ 102(a) and 102(b).
`
` William T. Silfvast, Laser Fundamentals, 2d ed., published in 2004
`(“Silfvast,” Ex. 1206); prior art to the ʼ841 patent under 35 U.S.C. §
`102(b).
`
`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 the Petitioners. I similarly have no
`
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`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
`financial interest in the ’841 patent.
`
`II. LEGAL PRINCIPLES
`22.
`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 also 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
`
`application for patent in the United States.” Further I have 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.
`
`23.
`
`I have been informed that a claim is invalid as obvious under 35
`
`U.S.C. § 103(a):
`
`
`
`7
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`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`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
`
`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 ordinary skill in the art at the time of the alleged
`
`invention of the ’841 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 plasmas.
`
`8
`
`

`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`The ’841 patent states that the alleged “invention relates to methods
`
`26.
`
`and apparatus for providing a laser-driven light source.” (’841 patent, 1:26-27 (Ex.
`
`1201).) Since a laser is fundamental to maintaining the plasma in all laser-driven
`
`light sources (including the light source in the ’841 patent), it is reasonable to
`
`expect that a person skilled in the art would have experience with, and an
`
`understanding of, both plasmas and lasers.
`
`27.
`
`In accord with the definition of the skilled artisan suggested above,
`
`my graduate students in 2005 (as well as before that time and since) normally took
`
`graduate level courses in both lasers and plasma physics, and routinely worked
`
`with (and were instructed in the laboratory about the properties of) plasmas, many
`
`of which were produced with lasers. Lasers sufficiently powerful to generate
`
`and/or sustain a plasma are a potential safety hazard and must be approached with
`
`skill. Fundamental safety concerns require those in the field of systems
`
`incorporating plasmas and lasers to understand both from a fundamental
`
`perspective and to acquire experience in working with both. Furthermore, because
`
`the properties of individual lasers determine if they are suitable for driving an
`
`efficient plasma light source, one skilled in the art must have an understanding of
`
`the state of the art in laser physics and technology, as well as the parameters and
`
`characteristics of the most efficient and powerful systems. By the time my graduate
`
`students obtained their Ph.D. degrees, therefore, they would have had at least 4-5
`
`9
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`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`years of experience with both plasmas and lasers. Thus, the problem and solution
`
`to which the ’841 patent is directed, and the experience of those who typically
`
`would work on developing laser-generated plasmas, demonstrate that a person of
`
`ordinary skill would have experience with both lasers and plasmas.
`
`IV. OVERVIEW OF THE ’841 PATENT
`28.
`The ’841 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 below, the light source includes a sealed
`
`pressurized chamber containing gas (green), an ignition source for ionizing the gas
`
`(blue), a laser providing energy to the plasma (red), a plasma-generated light, and
`
`the chamber having a transparent region to allow the plasma-generated light to
`
`exit. (’841 patent, claim 1 (Ex. 1201).) According to the ’841 patent, prior art
`
`light sources relied upon electrodes to both generate and sustain the plasma, which
`
`resulted in wear and contamination. (’841 patent, 1:42-58 (Ex. 1201).) Thus, an
`
`alleged need arose for a way to sustain plasma without relying on an electrical
`
`discharge from electrodes. (’841 patent, 1:59-63 (Ex. 1201).)
`
`10
`
`

`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
`ʼ841 Patent, Figure 1 (Ex. 1201)
`
`
`
`29.
`
`The alleged invention of the patent family involves using a laser to
`
`provide energy to sustain the plasma for a light source. The ’841 continuation adds
`
`claims that require that the laser operate within a wavelength range of 700-2000
`
`nm. (’841 patent, claim 1 (Ex. 1201).)
`
`30.
`
`As discussed below, there was nothing new in 2006 about sustaining a
`
`plasma with a laser to produce light. Multiple prior art references, including
`
`Gärtner, Mourou, and Kensuke disclosed laser-sustained plasma light sources.
`
`Moreover, there was nothing new about providing energy to a plasma with a laser
`
`operating within a range of 700-2000 nm. As the patent admits, efficient, cost
`
`effective, and high power lasers in the claimed wavelength range were “recently
`
`available.” (’841 patent, 16:6-14 (emphasis added) (Ex. 1201).) Mourou and
`
`Kensuke provide examples of systems that provide energy to a plasma with a laser
`
`operating within a range of 700-2000 nm, while Gärtner provides an example of a
`
`11
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`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`system that maintains a plasma. Silfvast shows that the laser used by Mourou and
`
`Kensuke could be operated as a continuous wave laser. It would have been
`
`obvious to combine Mourou and Silfvast or Kensuke and Silfvast with Gärtner to
`
`arrive at the claimed invention.
`
`A.
`
`
`
`Summary of the Prosecution History
`
`31.
`
`The ’841 patent (Ex. 1201) issued from U.S. Patent Appl. No.
`
`14/510,959, filed on October 9, 2014. The ’841 patent application is a
`
`continuation of the ’000 patent, which is a continuation of the ’138 patent, which is
`
`a continuation in part of U.S. Patent Appl. No. 12/166,918 (now U.S. Patent No.
`
`7,989,786), which is a continuation in part of the ’455 patent, which is a
`
`continuation in part of the ’982 patent, filed March 31, 2006. (See Ex. 1202.) As
`
`explained below, the Examiner allowed the claims of the ʼ841 patent only after the
`
`applicant amended the claims to include a limitation requiring the laser wavelength
`
`range to be between about 700 nm to 2000 nm.
`
`32.
`
`On November 12, 2014, the Examiner rejected the claims in light of
`
`various prior art references. (Office Action dated Nov. 12, 2014 (Ex. 1208).) The
`
`claims were primarily rejected based on U.S. 4,780,608 (“Cross”) and U.S.
`
`6,541,924 (“Kane”). The Office Action asserted that Cross discloses a light source
`
`comprising a pressurized chamber in which a laser sustained plasma emits light,
`
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`and that Kane discloses an ultraviolet light source comprising a pressurized
`
`chamber and an electrode ignition source. (Id. at 2-4.)
`
`33.
`
`On December 17, 2014, the applicant responded by amending the
`
`claims to include features such as a “sealed” chamber, pressure above 10 atm,
`
`wavelength ranges for the laser and the light produced by the plasma, and a
`
`chamber that is transparent/includes windows. (Applicant’s Amendment and
`
`Response at 3, dated Dec. 17, 2014 (Ex. 1209).) The applicant also added
`
`dependent claims further specifying the pressure and properties of the laser and
`
`plasma. The applicant argued that the amended claims with the additional
`
`limitations were distinct from the prior art because allegedly “none of the
`
`references of record produce a plasma generated light having output wavelengths
`
`greater than 50 nm.”1 (Id. at 10.)
`
`34.
`
`On January 22, 2015, the newly amended claims were allowed.
`
`(Notice of Allowability at 2, dated Jan. 22, 2015 (Ex. 1210).) With respect to
`
`application claims 1, 15, and 20, the Examiner introduced U.S. Publication No.
`
`2006/0152128 (“Manning”) but noted that Manning did not disclose the use of a
`
`1 Patent Owner was, in fact, mistaken. For example, Kane discloses a “plasma
`
`lamp” that is “capable of providing a source of high-peak-power incoherent
`
`ultraviolet (UV) light (80-350 nm, more typically 11-320 nm).” (U.S. Patent No.
`
`6,541,924 (“Kane”) at 7:53-59 (Ex. 1218).)
`
`13
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`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`laser with a wavelength from 700-2000 nm to create a plasma that produced a light
`
`with a wavelength greater than 50 nm. (Id.) Regarding Cross, the Examiner
`
`stated that in addition to not disclosing a laser with a wavelength from 700-2000
`
`nm, the reference did not disclose a transparent region of the chamber and was
`
`concerned with producing ions instead of light produced by a plasma. (Id. at 2-3.)
`
`The Examiner also stated that it would not have been obvious to combine Manning
`
`and Cross because “they belong to different fields of endeavor; namely, Manning
`
`uses a plasma to generate light, while Cross uses a plasma to generate ions.” (Id. at
`
`3.)
`
`35.
`
`The Examiner, however, did not consider Gärtner or Mourou or
`
`Silfvast, nor was the Examiner provided a complete English translation of
`
`Kensuke.2 As discussed below, (i) Gärtner in view of Mourou and Silfvast and (ii)
`
`
`2 Kensuke (JP 2006-10675) was included in an Information Disclosure Statement
`
`filed by applicant on October 9, 2014. However, applicant only submitted an
`
`English translation of the abstract and Kensuke was not used in any of the
`
`Examiner’s rejections. Notably, as described further below, Kensuke discloses the
`
`use of a laser with a wavelength from 700-2000 nm to create a plasma that
`
`produced a light with a wavelength greater than 50 nm, but the abstract does not
`
`provide this disclosure. (See infra at section VII.B.1.d).)
`
`14
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`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`Gärtner in view of Kensuke and Silfvast each renders the challenged claims
`
`unpatentable as obvious in view of the combinations below.
`
`36.
`
`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. IPR2015-01362 at 13-
`
`14 (PTAB Nov. 30, 2015) (Paper 12) (instituting on claims including independent
`
`claim 1).)
`
`V. CLAIM CONSTRUCTION
`37.
`I have applied the “broadest reasonable interpretation” standard in
`
`proposing the claim constructions below. However, based on my reading of the
`
`’841 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.
`38.
`
`“Light source”
`
` The term “light source” is recited in all challenged claims. “Light
`
`source” should be construed to mean “a source of electromagnetic radiation in the
`
`ultraviolet (“UV”), extreme UV, vacuum UV, visible, near infrared, middle
`
`15
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`

`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`infrared, or far infrared regions of the spectrum, having wavelengths within the
`
`range of 10 nm to 1,000 μm.”
`
`39.
`
`The ordinary and customary meaning of “light source”3 is a source of
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`electromagnetic radiation in the extreme UV (10 nm to 100 nm), vacuum UV (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 1,000 µm) regions of the spectrum. (See, e.g., William T.
`
`Silfvast, Laser Fundamentals 4 (2d. ed. 2004) (Ex. 1206).) The Patent Owner
`
`publishes a data sheet which is consistent with the ordinary and customary
`
`meaning in considering EUV [Extreme Ultraviolet] to be within the meaning of
`
`“light source.” (See, e.g., Energetiq EQ-10M Data Sheet at 2 (describing
`
`Energetiq’s EQ-10M product operating at 13.5 nm as an “EUV Light Source”)
`
`(Ex. 1207).)
`
`40.
`
`The ’841 patent does not provide a definition of the term “light
`
`source” and uses the term consistent with the ordinary and customary meaning of
`
`3 The term “light” is sometimes used more narrowly to refer only to visible light.
`
`However, references to “ultraviolet light” in the ’841 patent make clear that the
`
`broader meaning is intended because ultraviolet light has a wavelength shorter than
`
`that of visible light. (See, e.g., ’841 patent, 7:52; 17:13; 18:43; 20:32-33; 23:29;
`
`26:33) (Ex. 1201).)
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`16
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`the term. The ’841 patent states that parameters such as the wavelength of the light
`
`from a light source vary depending upon the application. (’841 patent, 1:39-41
`
`(Ex. 1201).) 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).” (’841 patent, 18:34-36 (Ex. 1201); see also id.
`
`at 17:12-14 (discussing the ultraviolet light 136 generated by the plasma 132 of the
`
`light source 100))
`
`41.
`
`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.” 4
`
`B.
`
`
`
`“Laser Driven Light Source”
`
`
`4 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 1-3
`
`and 7. (See Case No. IPR2015-01362 (PTAB Nov. 30, 2015) (Paper 12).) This
`
`construction is equivalent to the Petitioners’ prior proposed construction for the
`
`term “light source” in the prior Petitions for the ’841 patent and other patents in the
`
`patent family.
`
`17
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`The term “laser driven light source” is recited in all of the challenged
`
`42.
`
`claims. The term “laser driven light source” should be construed to mean a “light
`
`source having a laser applying energy to generate light.”
`
`43.
`
`The term “laser driven light source” is not a term of art. As used in
`
`the ’841 patent, a person of skill in the art would have understood the term “laser
`
`driven light source” to refer to light sources in which a laser supplies energy to a
`
`plasma for the purpose of generating light. (See e.g., ’841 patent, 14:45-50, 63-65
`
`(“The light source 100 also includes at least one laser source 104 that generates a
`
`laser beam that is provided to the plasma 132 located in the chamber 128 to initiate
`
`and/or sustain the high brightness light 136. . . . It is also desirable for the laser
`
`source 104 to drive and/or sustain the plasma with a high power laser beam.”) (Ex.
`
`1201).) Therefore, the term “laser driven light source” should be construed to
`
`mean a “light source having a laser applying energy to generate light.”5
`
`
`5 The particular construction for the claim term “laser driven light source” was
`
`adopted by the Board in the Decision granting Institution of Inter Partes Review
`
`for claims 1-3 and 7. (See Case No. IPR2015-01362 (PTAB Nov. 30, 2015) (Paper
`
`12).) This construction is equivalent to the Petitioners’ prior proposed construction
`
`for the term “laser driven light source” in the prior Petitions for the ’841 patent and
`
`other patents in the patent family.
`
`18
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`

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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
`
`
`C.
`44.
`
`“Substantially continuous laser”
`
`The term “substantially continuous laser” is recited in independent
`
`claim 1, from which the challenged claims depend. The term “substantially
`
`continuous laser” should be construed to encompass a continuous wave laser, a
`
`high pulse rate laser, and a laser that provides substantially continuous laser
`
`energy,” as the Board construed the term in its Decision granting Institution of
`
`Inter Partes Review for claims 1-3 and 7. (See Case No. IPR2015-01362 (PTAB
`
`Nov. 30, 2015) (Paper 12).)
`
`45.
`
`The specification of the ’841 patent indicates that a substantially
`
`continuous laser can be a continuous wave laser, a high pulse rate laser, or a laser
`
`that provides substantially continuous laser energy. (’841 patent, 15:60-62 (high
`
`pulse rate laser or continuous wave laser); 16:15-18 (“high pulse rate laser source
`
`that provides substantially continuous laser energy”); 4:53-55 (a “continuous-wave
`
`laser emits radiation continuously or substantially continuously rather than in short
`
`bursts, as in a pulsed laser”) (Ex. 1201).)
`
`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`46.
`Challenged claims 4, 5, 6, 8, and 26 of the ʼ841 patent recite and
`
`claim features that were known in the art prior to the earliest priority date, and are
`
`obvious in view of the prior art.
`
`19
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`

`
`A.
`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
` Laser Sustained Plasma Light Sources Were Known Long Before
`the Priority Date of the ’841 Patent
`47. When the application that led to the ’841 patent was filed, there was
`
`nothing new about a light source using an ignition source to generate a plasma in a
`
`pre