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 IPR2016-00771
`
`DECLARATION OF J. GARY EDEN, PH.D.
`REGARDING U.S. PATENT NO. 9,185,786
`CLAIMS 1, 6, 8, AND 13
`
`ASML 1003
`
`

`
`TABLE OF CONTENTS
`
`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`
`
`Page
`
`V.(cid:3)
`
`BACKGROUND ............................................................................................. 1(cid:3)
`I.(cid:3)
`LEGAL PRINCIPLES ..................................................................................... 6(cid:3)
`II.(cid:3)
`PERSON OF ORDINARY SKILL IN THE ART .......................................... 8(cid:3)
`III.(cid:3)
`IV.(cid:3) OVERVIEW OF THE ’786 PATENT .......................................................... 10(cid:3)
`A.(cid:3)
`Summary of the Prosecution History .................................................. 12(cid:3)
`CLAIM CONSTRUCTION .......................................................................... 15(cid:3)
`A.(cid:3)
`“light” .................................................................................................. 15(cid:3)
`B.(cid:3)
`“substantially continuous laser” .......................................................... 17(cid:3)
`VI.(cid:3) THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 18(cid:3)
`A.(cid:3)
`Laser Sustained Plasma Light Sources Were Known Long
`Before the Priority Date of the ’786 Patent ......................................... 18(cid:3)
`Sustaining a Plasma with a Laser at Various Wavelengths,
`Including Those Up to About 2000 nm, Was Well Known in
`the Art .................................................................................................. 19(cid:3)
`C.(cid:3) Maintaining a Plasma in an Elongated Form Was Well Known
`in the Art .............................................................................................. 31(cid:3)
`VII.(cid:3) GROUNDS FOR FINDING THE CHALLENGED CLAIMS INVALID ... 36(cid:3)
`A.(cid:3) Ground 1: Claims 1, 6, 8, and 13 Are Unpatentable Over
`Gärtner in View of Mourou and Silfvast ............................................. 37(cid:3)
`1.(cid:3)
`Independent Claim 1 .................................................................... 37(cid:3)
`2.(cid:3) Dependent Claim 6 ....................................................................... 57(cid:3)
`3.(cid:3)
`Independent Claim 8 .................................................................... 58(cid:3)
`4.(cid:3) Dependent Claim 13 ..................................................................... 61(cid:3)
`Ground 2: Claims 1, 6, 8, and 13 Are Unpatentable Over
`Gärtner in View of Kensuke and Silfvast ........................................... 61(cid:3)
`1.(cid:3)
`Independent Claim 1 .................................................................... 62(cid:3)
`2.(cid:3) Dependent Claim 6 ....................................................................... 70(cid:3)
`3.(cid:3)
`Independent Claim 8 .................................................................... 70(cid:3)
`4.(cid:3) Dependent Claim 13 ..................................................................... 72(cid:3)
`
`B.(cid:3)
`
`B.(cid:3)
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`
`
`VIII.(cid:3) RESPONSE TO ARGUMENTS RAISED BY PATENT OWNER
`REGARDING OBJECTIVE INDICIA OF NON-OBVIOUSNESS ............ 73(cid:3)
`IX.(cid:3) AVAILABILITY FOR CROSS-EXAMINATION ...................................... 74(cid:3)
`X.(cid:3)
`RIGHT TO SUPPLEMENT .......................................................................... 75(cid:3)
`XI.(cid:3)
`JURAT ........................................................................................................... 76(cid:3)
`
`
`
`
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`ii
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`U.S. Patent 9,185,786
`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
`
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`

`
`U.S. Patent 9,185,786
`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 9,185,786
`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
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`
`U.S. Patent 9,185,786
`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
`
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`U.S. Patent 9,185,786
`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.
`
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`U.S. Patent 9,185,786
`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.
`
`9,185,786 (the “’786 patent”; Ex. 1001). I have been informed that the ’786 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”; Ex. 1020).
`
`18.
`
`I have also reviewed the following references, all of which I
`
`understand to be prior art to the ’786 patent:
`
`(cid:120) French Patent Publication No. FR2554302A1, published May 3, 1985
`(“Gärtner,” Ex. 1004), with English Translation.
`
`(cid:120) International Publication WO-2004097520, published November 11,
`2004 (“Mourou,” Ex. 1014).
`
`(cid:120) Japanese Patent Publication No. 2006010675A, published January 12,
`2006 (“Kensuke,” Ex. 1005).
`
`(cid:120) William T. Silfvast, Laser Fundamentals, 2d ed., published in 2004
`(“Silfvast,” Ex. 1006).
`
`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 ’786 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
`
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`U.S. Patent 9,185,786
`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
`
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`U.S. Patent 9,185,786
`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 ordinary skill in the art at the time of the alleged
`
`invention of the ’786 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 plasmas, or a master’s degree in physics, electrical engineering, or an
`
`equivalent field and 4-5 years of work experience with lasers and plasmas.
`
`26.
`
` The ’786 patent is entitled “Laser-Driven Light Source.” The patent
`
`states that the alleged “invention relates to methods and apparatus for providing a
`
`laser-driven light source.” (’786 patent, 1:20-24 (Ex. 1001).) Since a laser is
`
`fundamental to maintaining the plasma in all laser-driven light sources (including
`
`the light source in the ’786 patent), it is reasonable to expect that a person skilled
`
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`
`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`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
`
`years of experience with both plasmas and lasers. Thus, the problem and solution
`
`to which the ’786 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.
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`
`IV. OVERVIEW OF THE ’786 PATENT
`28. The ’786 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), and a laser (red) that sustains a light-generating plasma. (’786 patent,
`
`14:40-18:11 (Ex. 1001).)
`
`(cid:1932)786 Patent, Figure 1 (Ex. 1001)
`
`
`
`29. According to the ’786 patent, prior art light sources relied upon
`
`electrodes to both generate and sustain the plasma, which resulted in wear and
`
`contamination. (’786 patent, 1:42-58 (Ex. 1001).) Thus, a need arose for a way to
`
`sustain plasma without relying on an electrical discharge from electrodes. (’786
`
`patent, 1:57-61 (Ex. 1001).) The alleged invention of the patent family involves
`
`10
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`using a laser to provide energy to sustain the plasma for a light source. The ’786
`
`continuation adds claims that require the laser to operate within a wavelength of up
`
`to about 2000 nm and that the plasma be maintained in an elongated form.
`
`30. As discussed below, there was nothing new or inventive 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 with pressurized chambers, lasers operating within certain wavelength
`
`ranges, and emitting light at certain wavelengths. Moreover, there was nothing
`
`new about providing energy to a plasma with a laser having a wavelength less than
`
`about 2000 nm, nor was there anything new about maintaining the plasma in an
`
`elongated form. As the patent admits, efficient, cost effective, and high power
`
`lasers in the claimed wavelength range were “recently available.” (’786 patent,
`
`16:6-14 (Ex. 1001).) Mourou and Kensuke provide examples of systems that
`
`provide energy to a plasma with a laser operating within the claimed wavelength
`
`range, while Gärtner provides an example of a system that maintains a plasma in
`
`an elongated form. 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. Furthermore, one skilled in the art in 2005 would have been
`
`well aware of other continuous wave (CW) or high pulse repetition frequency
`
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`(PRF) lasers that were available commercially and were capable of igniting or
`
`sustaining a plasma in a high pressure gas.
`
`A.
`
`Summary of the Prosecution History
`
`31. The ’786 patent (Ex. 1001) issued from U.S. Patent Appl. No.
`
`14/448,258, filed on July 31, 2014. The ’786 patent 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 No. 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. (See Chart of Related Patents (Ex. 1002).)
`
`32. During prosecution, the Examiner rejected the pending claims with
`
`elongated plasma limitations based on prior art. For example, among other
`
`rejections, the Examiner rejected claims 1, 8, 15, and 21 under § 102(b) as being
`
`anticipated by Hertz (Ex. 1026), which disclosed an “elongated EUV emitting
`
`plasma.” (December 15, 2014 Non-Final Office Action, 2-3 (Ex. 1008).) The
`
`Examiner also rejected other claims over Hertz in view of Ahmad (Ex. 1027),
`
`which disclosed a light source that “forms a plasma column 71 of high density
`
`(with a length from 1 mm to 50 mm and a diameter from 0.2 to 4 mm).” (Non-
`
`Final Office Action, 6-7 (Ex. 1008).) The Examiner also rejected the challenged
`
`12
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`claims 1, 6, 8, and 13 as being “not patentably distinct” from claims in other
`
`Energetiq patents and patent applications.1 (Id. at 22-39.)
`
`33. On June 15, 2015, the Patent Owner amended the independent claims
`
`to incorporate three additional features: (i) that the pressurized chamber be
`
`configured to contain an ionized gas “at a pressure greater than 10 atmospheres
`
`during operation;” (ii) that the laser be a “substantially continuous” laser that
`
`provides a beam of laser energy “within a wavelength range of up to about 2000
`
`nm;” and (iii) that the light generated by the plasma have “wavelengths of at least
`
`than 50 nm. [sic].” (Jun. 15, 2015 Patent Owner Response, 2 (Ex. 1009).) The
`
`Patent Owner argued that these features, which also appear in claim 1 of the ’841
`
`patent and claims 1, 15, and 18 of the ’000 patent for which IPRs have been
`
`instituted, distinguished the prior art, but did not address the elongated plasma
`
`limitations. (See id. at 6-9 (Ex. 1009); Case No. IPR2015-01362 at 3-4 (PTAB
`
`Nov. 30, 2015) (Paper 12) (instituting claim 1 of the ’841 patent); Case No.
`
`IPR2015-01375 at 3-4 (PTAB Nov. 30, 2015) (Paper 13) (instituting claims 1, 15,
`
`and 18 of the ’000 patent).) The Patent Owner also filed a terminal disclaimer,
`
`which terminally disclaimed the ’786 patent over the ’982 patent, the ’455 patent,
`
`1 These other Energetiq patents and patent applications include patents for which
`
`the Board has already instituted IPR petitions filed by Petitioners, such as the ’982,
`
`’455, ’841, ’000, and ’138 patents.
`
`13
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`the ’9786 patent, the ’841 patent, the ’000 patent, and the ’138 patent. (July 31,
`
`2014 Terminal Disclaimer (Ex. 1018).)
`
`34. On June 30, 2015, the Examiner allowed the claims. (Jun. 30, 2015
`
`Notice of Allowability (Ex. 1010).) In allowing the claims, the Examiner noted that
`
`the prior art, such as Hertz, disclosed “maintain[ing] the plasma in an elongated
`
`form[] having a plasma length that is greater than that of a plasma diameter.” (Id.
`
`at 2.) The Examiner, however, did not consider Silfvast, nor was the Examiner
`
`provided a complete English translation of Kensuke.2 The prosecution history of
`
`the ’786 patent provides no indication that the Examiner appreciated the
`
`significance of Gärtner (submitted on March 11, 2015, only three months before
`
`the claims were allowed), or Mourou (submitted on August 6, 2015, months after
`
`the claims were allowed). None of these references were cited by the Examiner.
`
`
`2 Kensuke was included in an Information Disclosure Statement filed by applicant
`
`on July 31, 2014. However, applicant only submitted an English translation for 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
`
`of less than 2000 nm to create a plasma that produces a light with a wavelength
`
`greater than 50 nm, but the abstract does not provide this disclosure. (See infra §
`
`VII.B.1.c).)
`
`14
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`35. As discussed below, Gärtner in view of Mourou and Silfvast, and
`
`Gärtner in view of Kensuke and Silfvast each render the challenged claims
`
`unpatentable as obvious.
`
`V. CLAIM CONSTRUCTION
`36.
`I have applied the “broadest reasonable interpretation” standard in
`
`proposing the claim constructions below. However, based on my reading of the
`
`’786 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, therefore, not dependent on application of the “broadest
`
`reasonable interpretation” standard.
`
`A.
`37.
`
` “light”
`
` The term “light” is recited in challenged claims 1, 6, 8, and 13.
`
`“Light” should be construed to mean “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 ’000 patent.3 (Case No. IPR2015-01375 at 6 (PTAB Nov. 30, 2015)
`
`(Paper 13).) This construction is equivalent to the Petitioners’ proposed
`
`construction for the term “light” in that proceeding.
`
`3 The ’786 patent is a continuation of the ’000 patent.
`
`15
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`38. The ordinary and customary meaning of “light”4 is electromagnetic
`
`radiation in the extreme ultraviolet (EUV) (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 1,000 μm) regions of the spectrum. (See, e.g., Silfvast, 4 (Ex.
`
`1006).) The Patent Owner publishes a data sheet which is consistent with the
`
`ordinary and customary meaning in recognizing that “light source” includes EUV
`
`wavelengths. (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. 1007).)
`
`39. The ’786 patent does not provide a definition of the term “light” and
`
`uses the term consistent with the ordinary and customary meaning of the term.
`
`Consistent with the ordinary and customary meaning of “light,” the ’786 patent
`
`states that parameters such as the wavelength of the light from a light source “vary
`
`depending upon the application.” (’786 patent, 1:36-38 (Ex. 1001).) The
`
`4 The term “light” is sometimes used more narrowly to refer only to visible light.
`
`However, references to “ultraviolet light” in the ’786 patent make clear that the
`
`broader meaning is intended because ultraviolet light has a wavelength shorter than
`
`that of visible light. (See, e.g., ’786 patent, 2:26; 3:44; 8:12; 16:46; 19:55; 21:18)
`
`(Ex. 1001).)
`
`16
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`specification describes “ultraviolet light” as an example of the type of light that can
`
`be generated. (See, e.g., id. at 18:34-36, 17:12-14.)
`
`40. Therefore, the term “light” should be construed to mean
`
`“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.”
`
`B.
`“substantially continuous laser”
`41. The term “substantially continuous laser” is recited in challenged
`
`claims 1 and 8. This term 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 on Institution in an IPR
`
`directed to the related ’841 patent. (Case No. IPR2015-01362 at 6-7 (PTAB Nov.
`
`30, 2015) (Paper 12).)
`
`42. The specification of the ’786 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. (’786 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. 1001).)
`
`17
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`43. The challenged claims 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.
`
`A. Laser Sustained Plasma Light Sources Were Known Long Before
`the Priority Date of the ’786 Patent
`44. When the application that led to the ’786 patent was filed, there was
`
`nothing new or inventive about a light source using a laser operating at certain
`
`wavelengths to sustain a plasma in a pressurized chamber to produce light at
`
`certain wavelengths. This concept had been known and widely used since at least
`
`as early as the 1980s, more than two decades before the application date.
`
`45. For example, Gärtner, which published in 1985, discloses a light
`
`source with the same features claimed in the ’786 patent: (1) a sealed chamber and
`
`(2) a laser that sustains a light-generating plasma. (Compare Gärtner, 4:31-35, 5:1-
`
`9, Fig. 1 (Ex. 1004) with ’786 patent, 2:8-15, Fig. 1 (Ex. 1001).) For example,
`
`Figure 1 of Gärtner below depicts a “gas-tight chamber 1” (green); “laser 10”
`
`(blue) for generating the plasma 14; and a “laser 9” (red) for sustaining the plasma
`
`(yellow) and producing a light. (Gärtner, 4-5, Fig. 1 (Ex. 1004).)
`
`18
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`
`’786 patent, Fig. 1 (Ex. 1001)
`
`
`
`
`
`
`
`Gärtner, Fig. 1 (Ex. 1004)
`
`B.
`
`Sustaining a Plasma with a Laser at Various Wavelengths,
`Including Those Up to About 2000 nm, Was Well Known in the
`Art
`46. Gärtner’s laser 9 is a CO2 laser. (Gärtner, 5:3-5 (Ex. 1004).) CO2
`
`lasers, which generally operate at a wavelength of 10.6 μm, were commonly used
`
`during the 1970s and 1980s because they provided high power and were cost-
`
`effective at the time. (See, e.g., Cross, 5:44-47 (“Carbon dioxide lasers have been
`
`used since the output therefrom is readily absorbed by plasmas and they are
`
`available with very high power in both pulsed and cw operating modes.”) (Ex.
`
`1015).) However, it was recognized around the time of Gärtner that shorter
`
`wavelength lasers could also be used. (See, e.g., id. at 5:40-53 (“[L]asers other
`
`than carbon dioxide may be used for the initiation and the sustaining of the
`
`continuous optical discharge plasma. For example, a Nd-YAG laser has been used
`
`for the initiation step. . . . Moreover, laser heating of a plasma via the inverse
`
`Bremsstrahlung process varies as (cid:540)2, so that cw-laser sources having shorter
`
`19
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`wavelengths such as Nd:Yag, for example, are absorbed less effectively, and
`
`would require substantially greater cw-laser output power levels to sustain the
`
`plasma.”).)
`
`47. By the mid-2000s, laser technology for shorter wavelengths (i.e.,
`
`those up to about 2000 nm) had improved significantly because o