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 IPR2016-00776
`
`DECLARATION OF J. GARY EDEN, PH.D.
`REGARDING U.S. PATENT NO. 9,185,786
`CLAIMS 15, 20, 21, AND 25
`
`ASML 1103
`
`

`
`TABLE OF CONTENTS
`
`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`
`
`Page
`
`B.(cid:3)
`
`V.(cid:3)
`
`BACKGROUND ............................................................................................. 1(cid:3)
`I.(cid:3)
`LEGAL PRINCIPLES ..................................................................................... 7(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” .................................................................................................. 16(cid:3)
`B.(cid:3)
`“substantially continuous laser energy” .............................................. 18(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 ......................................... 19(cid:3)
`Sustaining a plasma with a laser at various wavelengths,
`including those up to about 2000 nm, was well known in the art ....... 20(cid:3)
`C.(cid:3) Maintaining a plasma in an elongated form was well known in
`the art ................................................................................................... 32(cid:3)
`VII.(cid:3) GROUNDS FOR FINDING THE CHALLENGED CLAIMS INVALID ... 36(cid:3)
`A.(cid:3) Ground 1: Claims 15, 20, and 21 Are Unpatentable Over
`Gärtner in View of Mourou and Silfvast ............................................. 37(cid:3)
`1.(cid:3)
`Independent Claim 15 .................................................................. 37(cid:3)
`2.(cid:3) Dependent Claim 20 ..................................................................... 58(cid:3)
`3.(cid:3) Dependent Claim 21 ..................................................................... 58(cid:3)
`4.(cid:3) Reasons to Combine for Claims 20 and 21 .................................. 59(cid:3)
`Ground 2: Claim 25 is Unpatentable Over Gärtner in view of
`Mourou, Silfvast, and Uhlenbusch ...................................................... 60(cid:3)
`1.(cid:3) Dependent Claim 25 ..................................................................... 60(cid:3)
`Ground 3: Claims 15, 20, and 21 Are Unpatentable Over
`Gärtner in View of Kensuke and Silfvast ........................................... 64(cid:3)
`1.(cid:3)
`Independent Claim 15 .................................................................. 65(cid:3)
`2.(cid:3) Dependent Claim 20 ..................................................................... 73(cid:3)
`
`B.(cid:3)
`
`C.(cid:3)
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`
`3.(cid:3) Dependent Claim 21 ..................................................................... 73(cid:3)
`4.(cid:3) Reasons to Combine for Claims 20 and 21 .................................. 74(cid:3)
`D.(cid:3) Ground 4: Claim 25 is Unpatentable over Gärtner in view of
`Kensuke, Silfvast, and Uhlenbusch ..................................................... 74(cid:3)
`1.(cid:3) Dependent Claim 25 ..................................................................... 74(cid:3)
`VIII.(cid:3) RESPONSE TO ARGUMENTS RAISED BY PATENT OWNER
`REGARDING OBJECTIVE INDICIA OF NON-OBVIOUSNESS ............ 74(cid:3)
`IX.(cid:3) AVAILABILITY FOR CROSS-EXAMINATION ...................................... 76(cid:3)
`X.(cid:3)
`RIGHT TO SUPPLEMENT .......................................................................... 77(cid:3)
`XI.(cid:3)
`JURAT ........................................................................................................... 77(cid:3)
`
`
`ii
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`

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`I, J. Gary Eden, Ph.D., declare as follows:
`
`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`
`
`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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`professor in this department. In 1995, I was named the Director of the Laboratory
`
`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`
`
`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
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`2
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`

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`lighting, “light tiles”, that are thin and flat. This culminated in the formation of a
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
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`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
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`3
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`Aaron Kressel Award from the Photonics Society of the IEEE, and the Harold E.
`
`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`
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`Edgerton Award from the International Society for Optical Engineering. I was the
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`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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`

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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
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`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.
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`16. A copy of my curriculum vitae is attached as Appendix A.
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`
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`17.
`
`I have reviewed the specification and claims of U.S. Patent No.
`
`9,185,786 (the “’786 patent”; Ex. 1101). 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. 1120).
`
`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. 1104), with English Translation, and is prior art to the
`(cid:1932)786 patent under 35 U.S.C. § 102(b).
`
`(cid:120) International Publication WO-2004097520, published November 11,
`2004 (“Mourou,” Ex. 1114), and is prior art to the (cid:1932)786 patent under
`35 U.S.C. § 102(b).
`
`(cid:120) Japanese Patent Publication No. 2006010675A, published January 12,
`2006 (“Kensuke,” Ex. 1105), with English Translation, and is prior art
`to the (cid:1932)786 patent under 35 U.S.C. § 102(a) and 102(b).
`
`(cid:120) William T. Silfvast, Laser Fundamentals, 2d ed., published in 2004
`(“Silfvast,” Ex. 1106) and is prior art to the (cid:1932)786 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 Petitioners. I similarly have no financial
`
`interest in the ’786 patent.
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`
`
`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
`
`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
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`at the time the invention was made to a person having ordinary skill in the
`
`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`
`
`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 ’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.
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`8
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`

`
`26. The ’786 patent is entitled “Laser-Driven Light Source.” The patent
`
`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`
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`states that the alleged “invention relates to methods and apparatus for providing a
`
`laser-driven light source.” (’786 patent, 1:20-24 (Ex. 1101).) 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
`
`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
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`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
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`students obtained their Ph.D. degrees, therefore, they would have had at least 4-5
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`
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`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.
`
`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. 1101).)
`
`
`
`(cid:1932)786 Patent, Figure 1 (Ex. 1101)
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`10
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`29. According to the ’786 patent, prior art light sources relied upon
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`
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`electrodes to both generate and sustain the plasma, which resulted in wear and
`
`contamination. (’786 patent, 1:42-58 (Ex. 1101).) Thus, a need arose for a way to
`
`sustain plasma without relying on an electrical discharge from electrodes. (’786
`
`patent, 1:57-61 (Ex. 1101).) The alleged invention of the patent family involves
`
`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, that the plasma be maintained in an elongated form, and (for
`
`claim 25) that the plasma length be no more than about 2 mm.
`
`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 with a length less than about 2mm. 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. 1101).) Mourou and Kensuke
`
`provide examples of systems that provide energy to a plasma with a laser operating
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`11
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`
`within the claimed wavelength range, while Gärtner provides an example of a
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`
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`system that maintains a plasma in an elongated form. Uhlenbusch provides an
`
`example of a system that maintains an elongated plasma with a plasma length of
`
`less than about 2 mm. Furthermore, 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 (i) Mourou, Silfvast and Uhlenbusch, or (ii) Kensuke, Silfvast
`
`and Uhlenbusch with Gärtner to arrive at the claimed invention. Furthermore, one
`
`skilled in the art in 2005 would have been well aware of other continuous wav
`
`(CW) or high pulse repetition frequency (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. 1101) 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. 1102).)
`
`32. During prosecution, the Examiner rejected the pending claims with
`
`elongated plasma limitations based on prior art. For example, among other
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`rejections, the Examiner rejected claims 1, 8, 15, and 21 under § 102(b) as being
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
`
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`anticipated by Hertz (Ex. 1126), which disclosed an “elongated EUV emitting
`
`plasma.” (December 15, 2014 Non-Final Office Action, 2-3 (Ex. 1108).) The
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`Examiner also rejected other claims over Hertz in view of Ahmad (Ex. 1127),
`
`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, at 6-7 (Ex. 1108).) The Examiner also rejected the challenged
`
`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. 1109).) The
`
`
`1 These other Energetiq patents and patent applications include patents for which
`
`the Board has already instituted IPR petitions, such as the ’982, ’455, ’841, ’000,
`
`and ’138 patents.
`
`13
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`Patent Owner argued that these features, which also appear in claim 1 of the ’841
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
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`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. 1109); 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).) As part of this amendment, Patent Owner also added
`
`claim 25, which recites a plasma having a length of no more than about 2 mm, but
`
`did not argue that this feature made claim 25 separately patentable. The Patent
`
`Owner also filed a terminal disclaimer, which terminally disclaimed the ’786
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`patent over the ’982 patent, the ’455 patent, the ’9786 patent, the ’841 patent, the
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`’000 patent, and the ’138 patent. (July 31, 2014 Terminal Disclaimer (Ex. 1118).)
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`34. On June 30, 2015, the Examiner allowed the claims. (Jun. 30, 2015
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`Notice of Allowability (Ex. 1110).) In allowing the claims, the Examiner noted that
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`the prior art, such as Hertz, disclosed “maintain[ing] the plasma in an elongated
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`form[] having a plasma length that is greater than that of a plasma diameter.” (Id.
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`at 2.) The Examiner, however, did not consider Silfvast, nor was the Examiner
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`14
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`provided a complete English translation of Kensuke.2 The prosecution history of
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
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`the ’786 patent provides no indication that the Examiner appreciated the
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`significance of Gärtner (submitted on March 11, 2015, only three months before
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`the claims were allowed), or Mourou (submitted on August 6, 2015, months after
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`the claims were allowed). None of these references were cited by the Examiner.
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`35. As discussed below, Gärtner in view of Mourou and Silfvast, and
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`Gärtner in view of Kensuke and Silfvast (plus Uhlenbusch for claim 25) each
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`render the challenged claims unpatentable as obvious.
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`V. CLAIM CONSTRUCTION
`36.
`I have applied the “broadest reasonable interpretation” standard in
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`proposing the claim constructions below. However, based on my reading of the
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`’786 patent’s specification and the ordinary meanings of the claim terms, the prior
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`2 Kensuke was included in an Information Disclosure Statement filed by applicant
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`on July 31, 2014. However, applicant only submitted an English translation for the
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`abstract and Kensuke was not used in any of the Examiner’s rejections. Notably,
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`as described further below, Kensuke discloses the use of a laser with a wavelength
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`of less than 2000 nm to create a plasma that produces a light with a wavelength
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`greater than 50 nm, but the abstract does not provide this disclosure. (See infra §
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`VII.C.1.c).)
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`art teaches each claim limitation under any reasonable interpretation of the claim
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
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`terms. My analysis is, therefore, not dependent on application of the “broadest
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`reasonable interpretation” standard.
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`A.
`37.
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` “light”
`
` The term “light” is recited in challenged claim 15, from which all
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`other challenged claims depend. “Light” should be construed to mean
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`“electromagnetic radiation in the ultraviolet (“UV”), extreme UV, vacuum UV,
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`visible, near infrared, middle infrared, or far infrared regions of the spectrum,
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`having wavelengths within the range of 10 nm to 1,000 μm,” as the Board
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`construed the term in its Decision on Institution in an IPR directed to the ’000
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`patent.3 (Case No. IPR2015-01375 at 6 (PTAB Nov. 30, 2015) (Paper 13).) This
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`construction is equivalent to the my proposed construction for the term “light” in
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`that proceeding.
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`38. The ordinary and customary meaning of “light”4 is electromagnetic
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`radiation in the extreme ultraviolet (EUV) (10 nm to 100 nm), vacuum ultraviolet
`
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`3 The ’786 patent is a continuation of the ’000 patent.
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`4 The term “light” is sometimes used more narrowly to refer only to visible light.
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`However, references to “ultraviolet light” in the ’786 patent make clear that the
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`broader meaning is intended because ultraviolet light has a wavelength shorter than
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`(100 nm to 200 nm), ultraviolet (200 nm to 400 nm), visible (400 to 700 nm), near-
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
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`infrared (700 nm to 1,000 nm (1μm)), middle infrared (1 μm to 10 μm), or far
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`infrared (10 μm to 1,000 μm) regions of the spectrum. (See, e.g., Silfvast, 4 (Ex.
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`1106).) The Patent Owner publishes a data sheet which is consistent with the
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`ordinary and customary meaning in recognizing that “light source” includes EUV
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`wavelengths. (See, e.g., Energetiq EQ-10M Data Sheet at 2 (describing
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`Energetiq’s EQ-10M product operating at 13.5 nm as an “EUV Light Source”)
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`(Ex. 1107).)
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`39. The ’786 patent does not provide a definition of the term “light” and
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`uses the term consistent with the ordinary and customary meaning of the term.
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`Consistent with the ordinary and customary meaning of “light,” the ’786 patent
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`states that parameters such as the wavelength of the light from a light source “vary
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`depending upon the application.” (’786 patent, 1:36-38 (Ex. 1101).) The
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`specification describes “ultraviolet light” as an example of the type of light that can
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`be generated. (See, e.g., id. at 18:34-36, 17:12-14.)
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`40. Therefore, the term “light” should be construed to mean
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`“electromagnetic radiation in the ultraviolet (“UV”), extreme UV, vacuum UV,
`
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`that of visible light. (See, e.g., ’786 patent, 2:26; 3:44; 8:12; 16:46; 19:55; 21:18)
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`(Ex. 1101).)
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`visible, near infrared, middle infrared, or far infrared regions of the spectrum,
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
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`having wavelengths within the range of 10 nm to 1,000 μm.”
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`B.
`“substantially continuous laser energy”
`41. The term “substantially continuous laser energy” is recited in
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`challenged claim 15, from which all other challenged claims depend. This term
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`should be construed to encompass laser energy from a continuous wave laser as
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`well as a high pulse rate laser, similar to how the Board construed the term
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`“substantially continuous laser” 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)
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`(Paper 12).)
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`42. The specification of the ’786 patent indicates that substantially
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`continuous laser energy can encompass laser energy from a continuous wave laser
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`as well as a high pulse rate laser. (’786 patent, 15:60-62 (high pulse rate laser or
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`continuous wave laser); 16:15-18 (“high pulse rate laser source that provides
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`substantially continuous laser energy”); 4:53-55 (a “continuous-wave laser emits
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`radiation continuously or substantially continuously rather than in short bursts, as
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`in a pulsed laser.”) (Ex. 1101).)
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`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`43. The challenged claims recite and claim features that were known in
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`the art prior to the earliest priority date, and are obvious in view of the prior art.
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`U.S. Patent 9,185,786
`Declaration of J. Gary Eden, Ph.D.
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`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
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`nothing new or inventive about a light source using a laser operating at certain
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`wavelengths to sustain a plasma in a pressurized chamber to produce light at
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`certain wavelengths. This concept had been known and widely used since at least
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`as early as the 1980s, more than two decades before the application date.
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`45. For example, Gärtner, which published in 1985, discloses a light
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`source with the same features claimed in the ’786 patent: (1) a sealed chamber and
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`(2) a laser that sustains a light-generating plasma . (Compare Gärtner, 4:31-35,
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`5:1-9, Fig. 1 (Ex. 1104) with ’786 patent, 2:8-15, Fig. 1 (Ex. 1101).) For example,
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`Figure 1 of Gärtner below depicts a “gas-tight chamber 1” (green); “laser 10”
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`(blue) for generating the plasma 14; and a “laser 9” (red) for sustaining the plasma
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`(yellow) and producing a light. (Gärtner, 4-5, Fig. 1 (Ex. 1104).)
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`’786 patent, Fig. 1 (Ex. 1101)
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`
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`Gärtner, Fig. 1 (Ex. 1104)
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`U