`
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`
`
`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`OCEAN SEMICONDUCTOR LLC,
`Plaintiff,
`
`vs.
`MEDIATEK INC., ET AL.,
`Defendant.
`OCEAN SEMICONDUCTOR LLC,
`Plaintiff,
`
`vs.
`NVIDIA CORPORATION,
`Defendant.
`OCEAN SEMICONDUCTOR LLC,
`Plaintiff,
`
`vs.
`NXP SEMICONDUCTORS NV, ET AL.,
`Defendant.
`OCEAN SEMICONDUCTOR LLC,
`Plaintiff,
`
`vs.
`RENESAS ELECTRONICS CORPORATION, ET
`AL.,
`
`Defendant.
`OCEAN SEMICONDUCTOR LLC,
`Plaintiff,
`
`vs.
`SILICON LABORATORIES INC.,
`Defendant.
`OCEAN SEMICONDUCTOR LLC,
`Plaintiff,
`
`vs.
`STMICROELECTRONICS INC.,
`Defendant.
`OCEAN SEMICONDUCTOR LLC,
`Plaintiff,
`
`vs.
`WESTERN DIGITAL TECHNOLOGIES, INC.,
`Defendant.
`
`
`
`NO. 6:20-cv-01210-ADA
`
`
`
`NO. 6:20-cv-01211-ADA
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`
`
`NO. 6:20-cv-01212-ADA
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`
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`NO. 6:20-cv-01213-ADA
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`
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`NO. 6:20-cv-01214-ADA
`
`
`
`NO. 6:20-cv-01215-ADA
`
`
`
`NO. 6:20-cv-01216-ADA
`
`DEFENDANTS’ FINAL INVALIDITY CONTENTIONS
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`IPR2022-00681
`PATENT OWNER, EX 2002
`
`
`
`Pursuant to the Court’s Scheduling Order dated July 15, 2021, and the parties’ stipulated
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`extension of the final contention deadline, each of Defendants MediaTek Inc.; MediaTek USA
`
`Inc.; NVIDIA Corporation; NXP USA, Inc.; Renesas Electronics Corporation; Renesas
`
`Electronics America, Inc.; Silicon Laboratories Inc.; STMicroelectronics, Inc.; and Western
`
`Digital Technologies, Inc. (collectively “Defendant” or “Defendants”) hereby submits the
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`following Final Invalidity Contentions regarding U.S. Patent Nos. 6,660,651 (“the ’651 patent”),
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`6,907,305 (“the ’305 patent”), 6,725,402 (“the ’402 patent”), 6,968,248 (“the ’248 patent”),
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`7,080,330 (“the ’330 patent”), 6,836,691 (“the ’691 patent”), 8,676,538 (“the ’538 patent”), and
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`6,420,0971 (“the ’097 patent”) (collectively, “the Asserted Patents”).
`
`Plaintiff Ocean Semiconductor LLC (“Ocean”) alleges in its July 2, 2021, Preliminary
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`Infringement Contentions that certain Defendants infringe the following claims of the Asserted
`
`Patents (collectively, the “Asserted Claims”):
`
`Patent
`
`6,660,651
`
`Asserted Claims
`
`Claims 19, 20, 21, 22, 23, 24, 72, 73, 74, 75, 77, 78,
`79, 80, 812
`
`1 The ’097 Patent is asserted only against NXP USA, Inc. and STMicroelectronics, Inc. in No.
`6:20-cv-01212 and No. 6:20-cv-01215, respectively. All references to the ’097 Patent in these
`Invalidity Contentions apply only to NXP USA, Inc. and STMicroelectronics, Inc. and not to the
`other Defendants or their cases, although the other Defendants reserve the right to rely on the ’097
`Patent and its prior art as appropriate to demonstrate invalidity of the patents asserted against them.
`2 The Court held asserted claims 31, 32, and 34–37 are invalid as indefinite. See Claim
`Construction Order at 3 (finding “said process chamber” in asserted claims 31, 32, and 34–37
`indefinite). Ocean has confirmed that it is no longer asserting these claims in this litigation. See,
`e.g., Letter from A. Chan to K. Kieckhefer dated Dec. 13, 2021, at 3 (acknowledging Court’s
`construction rendered Ocean’s infringement contentions for these claims “moot” and “reserv[ing]
`right to appeal the Court’s claim construction”). Thus, Defendants do not address previously
`asserted claims 31, 32, 34, 35, 36, or 37 of the ’651 patent herein.
`
`-2-
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`IPR2022-00681
`PATENT OWNER, EX 2002
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`
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`Patent
`
`Asserted Claims
`
`6,907,305
`
`Claims 1, 2, 3, 4,3 5, 7, 8,4 9,5 10, 11
`
`6,725,402
`
`Claims 1, 2, 3, 4, 5, 6, 7
`
`6,968,248
`
`Claims 1, 2, 3, 4, 5, 6,6 7, 8, 9, 10, 11, 12
`
`8,676,538
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`Claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16
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`7,080,330
`
`Claims 19, 20, 21
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`6,836,691
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`Claims 1, 2, 3, 4, 5, 6, 7, 8, 9
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`6,420,0977
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`Claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 17
`
`Defendant reserves the right to supplement and/or amend these Final Invalidity
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`Contentions based on the disclosures in Plaintiff’s Final Infringement Contentions (which are
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`being exchanged concurrently) and/or in the event Plaintiff supplements and/or amends its Final
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`Infringement Contentions or otherwise alters its theory of the case.8 Nothing in these Final
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`Invalidity Contentions constitutes an admission of validity as to any other non-asserted claims of
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`the Asserted Patents.
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`As discussed below, Defendant contends that each Asserted Claim is invalid under at least
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`35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`3 This claim is only asserted against STMicroelectronics, Inc., Western Digital Technologies, Inc.
`(“WDT”), MediaTek Inc., and MediaTek USA Inc. (collectively “MediaTek”).
`4 This claim is only asserted against NVIDIA Corporation, WDT, and MediaTek.
`5 This claim is only asserted against STMicroelectronics, Inc., WDT, and MediaTek.
`6 This claim is only asserted against NVIDIA Corporation, WDT, and MediaTek.
`7 As noted supra, this patent is not asserted against all Defendants.
`8 Including in view of any inconsistent positions Ocean may take between inter partes review
`proceedings relating to the Asserted Patents, e.g., in its preliminary responses and other briefing,
`and this litigation.
`
`-3-
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`IPR2022-00681
`PATENT OWNER, EX 2002
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`A.
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`PRELIMINARY STATEMENT AND RESERVATION OF RIGHTS
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`Defendant’s Final Invalidity Contentions reflect its present knowledge and understanding
`
`of Ocean’s Preliminary Infringement Contentions regarding the Asserted Claims. Defendant’s
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`Final Invalidity Contentions are based on Defendant’s current knowledge, understanding, and
`
`belief as to the facts and information available as of the date of these Final Invalidity Contentions.
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`Defendant has not yet completed its investigation, discovery, or analysis of matters relating to the
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`invalidity of the Asserted Claims, including without limitation invalidity due to on-sale or public
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`use statutory bars. In addition, Defendant’s search for prior art is ongoing. For example, CamLine
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`produced several documents on May 24, 2022, one or more of which may identify prior art
`
`system(s). Accordingly, Defendant reserves the right to amend, modify, and supplement, without
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`prejudice, these Final Invalidity Contentions as additional information is discovered or otherwise
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`identified or appreciated, including testimony about the scope and content of the claimed
`
`inventions or state of the prior art.
`
`Defendant submits these Final Invalidity Contentions without waiving Defendant’s
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`position that Ocean’s Preliminary Infringement Contentions do not adequately identify with
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`sufficient specificity the basis for Ocean’s contention that any accused product is manufactured by
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`a process that meets the limitations of any of the Asserted Claims. Nothing stated herein is or shall
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`be treated as an admission or suggestion that Defendant agrees with Ocean regarding either the
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`scope of any of the Asserted Claims or the claim constructions advanced directly or implicitly by
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`Ocean’s Preliminary Infringement Contentions or in any other pleading, discovery request or
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`response, or written or verbal communications with Defendant. For example, although Defendants
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`charted certain features described in prior art systems and documents for certain claim limitations,
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`Defendants’ charting is based on Defendants’ understanding of Ocean’s interpretation of those
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`claim limitations as reflected, for example, in Ocean’s Preliminary Infringement Contentions.
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`-4-
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`IPR2022-00681
`PATENT OWNER, EX 2002
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`Defendants do not waive their right to argue that the charted features of the prior art, to the extent
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`present in the Accused Devices, do not infringe the corresponding claim limitations. Additionally,
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`nothing in these Final Invalidity Contentions shall be treated as an admission that any accused
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`products meet any limitation of the Asserted Claims. The disclosures herein are not and should
`
`not be construed as a statement that no other persons have discoverable information, that no other
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`documents, data compilations, or tangible things exist that Defendant may use to support its claims
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`or defenses, or that no other legal theories or factual bases will be pursued.
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`For terms that have not been construed by the Court, Defendant has based these Final
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`Invalidity Contentions upon its knowledge and understanding of the potential scope of the Asserted
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`Claims at this time, and, in part, upon the apparent constructions of the Asserted Claims advanced
`
`by Ocean in its Preliminary Infringement Contentions. Furthermore, Ocean’s Preliminary
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`Infringement Contentions contradict how a person of ordinary skill in the art would understand the
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`Asserted Patents and the claim terms, and are vague and conclusory concerning how certain claim
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`limitations supposedly read on the accused products or activities. Finally, Defendant’s Final
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`Invalidity Contentions do not represent Defendant’s agreement or view as to the meaning of any
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`claim term contained therein, and Defendant may disagree with Ocean’s interpretation of the
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`meaning of terms and phrases in the Asserted Claims. In addition, Defendant’s Final Invalidity
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`Contentions do not represent Defendant’s agreement or view as to whether any claim preamble is
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`limiting.
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`Defendant reserves the right to supplement, without prejudice, these Final Invalidity
`
`Contentions as appropriate depending upon Ocean’s Final Infringement Contentions, any findings
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`as to the priority date of the Asserted Patents, and positions that Ocean or its expert witnesses may
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`take concerning claim interpretation, infringement, or invalidity issues.
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`
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`-5-
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`IPR2022-00681
`PATENT OWNER, EX 2002
`
`
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`
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`Defendant provides certain claim charts as described herein. The claim charts reflect the
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`theories of invalidity described in each chart, including anticipation and obviousness. The
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`suggested obviousness combinations are in the alternative to Defendant’s anticipation contentions.
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`The disclosed obvious combinations are not meant to be exhaustive and should not be construed
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`to suggest that any reference does not anticipate claims of the Asserted Patents. As reflected in
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`the attached exhibits, the discussion herein, and in the references themselves, all elements of
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`Ocean’s Asserted Claims were disclosed in the art and in the general knowledge of a person of
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`ordinary skill before the Asserted Patents’ earliest possible priority date. Furthermore, one of
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`ordinary skill in the art would have readily combined their teachings. Each of the references cited
`
`herein, including the identified prior art systems, or in the attached exhibits may be combined and
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`modified in several obvious ways to achieve the claimed systems and methods, including those
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`disclosed in the attached exhibits or the discussion herein.
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`Defendant further contends that various asserted claims of the Asserted Patents are invalid
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`under 35 U.S.C. § 101 for failure to claim patentable subject matter and/or under 35 U.S.C. § 112
`
`for failure to satisfy the enablement, written description, and/or definiteness requirements.
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`Defendant’s contentions of invalidity under § 101 and/or § 112 are based in whole or in part on its
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`present understanding of the Asserted Claims and Ocean’s apparent construction of those claims
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`in its Preliminary Infringement Contentions. Accordingly, Defendant’s Final Invalidity
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`Contentions may reflect alternative positions as to claim scope of the Asserted Claims. Further,
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`by asserting grounds for invalidity based on Ocean’s apparent claim construction or any other
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`particular claim construction, Defendant is not adopting Ocean’s claim construction, nor admitting
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`to the accuracy of any particular claim construction.
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`Defendant provides invalidity claim charts as exhibits as shown below:
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`
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`-6-
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`IPR2022-00681
`PATENT OWNER, EX 2002
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`Patent
`
`Exhibits for Corresponding Charts
`
`6,660,651
`
`6,907,305
`
`6,725,402
`
`6,968,248
`
`8,676,538
`
`7,080,330
`
`6,836,691
`
`6,420,097
`
`A
`
`B
`
`C
`
`D
`
`E
`
`F
`
`G
`
`H
`
`B.
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`PRIORITY AND CONCEPTION DATES FOR THE ASSERTED CLAIMS
`
`In its Preliminary Infringement Contentions, Ocean contends that the Asserted Claims of
`
`some Asserted Patents are entitled to priority based on the filing dates of U.S. Application No.
`
`10/135,145, U.S. Application No. 12/110,798, U.S. Application No. 11/469,194, and U.S.
`
`Application No. 11/469,194. Defendant disputes whether any Asserted Claim is entitled to any
`
`priority date earlier than the filing dates of the applications for the Asserted Patents.
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`Ocean further contends that the alleged inventions of the Asserted Claims were conceived
`
`as of February 12, 2001 for the ’651 patent; January 29, 1999 for the ’402 patent; May 3, 2002 for
`
`the ’330 patent; January 7, 2003 for the ’691 patent; and November 7, 1999 for the ’097 patent.
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`Defendant disputes whether any Asserted Claim is entitled to a conception date earlier than the
`
`filing dates of the applications for the Asserted Patents.
`
`C.
`
`INVALIDITY UNDER 35 U.S.C. §§ 102 AND 103
`
`Defendant contends that each Asserted Claim is invalid at least under 35 U.S.C. § 102,
`
`including pre-AIA subsections 102(a), 102(b), 102(e), and 102(g), AIA subsections 102(a)(1) and
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`102(a)(2), and/or under 35 U.S.C. § 103. Pursuant to the Order Governing Proceedings,
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`-7-
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`IPR2022-00681
`PATENT OWNER, EX 2002
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`
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`Defendant’s detailed contentions as to how each identified prior art reference either anticipates or
`
`renders obvious the Asserted Claims are attached as Exhibits. For each Asserted Patent, the
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`Exhibits contain a separate chart for each anticipating and/or primary obviousness reference
`
`detailing where that reference teaches each limitation of the Asserted Claims. For each Asserted
`
`Patent, the Exhibits also contain an omnibus combination reference chart detailing which
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`limitations are taught by each combination reference. Defendant reserves the right to combine
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`each anticipating and/or primary obviousness reference with (1) other anticipating and/or
`
`obviousness references, (2) any reference described in the omnibus reference chart, or (3) a
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`combination thereof. Defendant also reserves the right to rely on other references disclosed or
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`incorporated by reference in these Final Invalidity Contentions, in the Asserted Patents, any patents
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`or applications related to the Asserted Patents, in the file history of the Asserted Patents or any
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`related patents or applications, and in the attached Exhibits.
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`Defendant’s claim charts may disclose multiple theories of invalidity in a single chart.
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`Each chart directed to an anticipatory product/system may also describe that the product/system
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`alone, in light of the knowledge and skill in the art, or in light of one or more other prior art
`
`references, renders each Asserted Claim obvious.
`
`Where Defendant cites to a particular figure in a prior art reference, the citation should be
`
`understood to encompass the caption and description of the figure as well as any text relating to
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`the figure in addition to the figure itself. Conversely, where a cited portion of text refers to a
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`figure, the citation should be understood to include the figure as well. Furthermore, while
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`Defendant has generally identified at least one citation per limitation present in a reference or
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`combination, each and every disclosure of the same or similar limitation in the same reference or
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`combination is not necessarily identified. To focus the issues, Defendant cites only particularly
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`-8-
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`IPR2022-00681
`PATENT OWNER, EX 2002
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`pertinent portions of identified references, even where a reference or combination may contain
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`additional support for a particular claim element. Thus, Defendant may rely on uncited portions
`
`of the prior art references for additional support for a particular element. Defendant may rely upon
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`other prior art identified in future supplements, corroborating references, documentation, source
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`code, products, and testimony, including materials obtained through further investigation and
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`third-party discovery of the prior art identified herein, that demonstrates the invalidating
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`functionality identified in these Final Invalidity Contentions or that show the state of the art in the
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`relevant time period (irrespective of whether such references themselves qualify as prior art to the
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`Asserted Patent), and expert testimony to provide context to or aid in understanding the cited
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`portions of the identified prior art. Similarly, where there are multiple references relating to a
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`single prior art product or system, Defendant may cite only to a single reference for a particular
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`limitation, even though other references may also contain similar teachings. Thus, Defendant may
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`rely on uncited references relating to a particular prior art document or system for additional
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`support for a particular element. Any prior art disclosed as anticipating a limitation also renders
`
`that limitation obvious.
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`Certain of the Asserted Claims are also invalid due to obviousness-type double patenting
`
`based on the grounds discussed in Section d.3 below.
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`Additionally, persons of ordinary skill in the art at the time of the alleged inventions
`
`generally read a prior art reference as a whole and in the context of other publications and literature.
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`Numerous prior art references, including those identified herein and in the attached exhibits, reflect
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`common knowledge and the state, scope, and content of the prior art before the priority date of the
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`Asserted Claims of the Asserted Patents. Defendant may rely on uncited portions of the prior art
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`-9-
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`IPR2022-00681
`PATENT OWNER, EX 2002
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`references and on other publications and expert testimony to provide context and as aids to
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`understanding and interpreting the portions that are cited.
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`In general, a claimed invention is invalid due to obviousness “if the differences between
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`the claimed invention and the prior art are such that the claimed invention as a whole would have
`
`been obvious before the effective filing date of the claimed invention to a person having ordinary
`
`skill in the art.” 35 U.S.C. § 103; Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). The
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`ultimate determination of whether an invention is or is not obvious is a legal conclusion based on
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`underlying factual inquiries including: “(1) the scope and content of the prior art; (2) the
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`differences between the prior art and the claims; (3) the level of ordinary skill in the art at the time
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`of invention; and (4) objective evidence of nonobviousness.” Miles Labs., Inc. v. Shandon, Inc.,
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`997 F.2d 870, 877 (Fed. Cir. 1993); see Graham, 383 U.S. at 17-18. The U.S. Supreme Court
`
`decision in KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007) reaffirmed Graham, but
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`further held that a claimed invention can be obvious even if there is no explicit teaching,
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`suggestion, or motivation for combining the prior art to produce that invention.
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`To the extent that any claim limitation is not anticipated pursuant to 35 U.S.C. § 102,
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`Defendant contends that any purported differences are such that the claimed subject matter as a
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`whole would have been obvious to one skilled in the art at the time of the alleged inventions, in
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`view of the state of the art and knowledge of those skilled in the art under 35 U.S.C. § 103. Each
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`Asserted Claim would have been obvious in view of each reference cited in the attached Exhibits
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`either alone or combined with the knowledge that was possessed by one of ordinary skill in the
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`art. Additionally, each Asserted Claim would have been obvious to one of ordinary skill in the art
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`in view of the combination of any one of the prior art references identified in the attached Exhibits
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`with one or more of the other references identified or discussed in the same Exhibits.
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`-10-
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`IPR2022-00681
`PATENT OWNER, EX 2002
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`In particular, those of ordinary skill in the art at the time of the alleged inventions of the
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`Asserted Patents would have been motivated to modify or combine the prior art references because,
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`for example: (a) the references in general deal with the same or related subject matter; (b) one of
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`ordinary skill in the art would have been motivated by the problem that the inventor was attempting
`
`to solve, or with other problems that would have been faced in reaching a solution, and would have
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`looked to references that concerned similar issues or taught how to overcome the problems faced;
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`(c) the combinations were obvious to try and would have operated in their known and expected
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`way; (d) the combinations were within the technical skill and understanding of a person of ordinary
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`skill in the art; (e) the combinations would have been motivated by the developments in
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`technology; and (f) the combinations reflect various design choices that would have been known
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`to one of ordinary skill in the art and within that person’s technical capability to implement (i.e.,
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`technically feasible).
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`The various motivations described above provide a basis for combining or modifying
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`references, as detailed below, to render each of the Asserted Claims obvious. In addition, the Court
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`can consider the inferences and creative steps a person of ordinary skill in the art would employ in
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`making such combinations. See KSR, 127 S. Ct. at 1741 (“a court can take account of the
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`inferences and creative steps that a person of ordinary skill in the art would employ”).
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`If, and to the extent, Ocean challenges the correspondence of the references in the Exhibits
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`with respect to particular limitations of the Asserted Claims of the Asserted Patents, Defendant
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`reserves the right to supplement these Final Invalidity Contentions to identify additional
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`combinations, motivations to modify, or explanations for particular references with additional
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`particularity.
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`-11-
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`IPR2022-00681
`PATENT OWNER, EX 2002
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`Additionally, Defendant believes that certain non-parties and current or former employees
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`thereof may have possession of relevant information and/or documents constituting prior art to the
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`Asserted Patents, including prior art products and systems. Defendant has identified several prior
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`art products and systems in these Final Invalidity Contentions. Defendant is continuing its
`
`investigation into these and other companies and their products. Defendant reserves the right to
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`supplement these Final Invalidity Contentions to identify additional references, combinations,
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`motivations to modify, or explanations for particular references based on any information and/or
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`documents provided by the former employees and/or successors-in-interests of companies or
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`individuals who may possess relevant information and/or documents constituting prior art to the
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`Asserted Patents, including information and documents about prior art systems. The concepts
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`disclosed and claimed in each of the Asserted Patents are not new, and had been disclosed, used,
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`offered for sale, sold, and practiced by others prior to the claimed priority date of the patents. The
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`prior art identified herein and in the Exhibits, individually or in combination, invalidates the
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`asserted claims under 35 U.S.C. §§ 102 (a), (b), (e), (g) and §103. Because discovery has not yet
`
`closed, Defendants expect to gather additional information about the identified prior art, and other
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`prior art, through third party discovery or other discovery, and will thus amend and supplement
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`these invalidity contentions once they obtain that discovery and have meaningful and reasonable
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`time to analyze it.
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`Moreover, Defendant reserves the right to rely on inventor admissions concerning the
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`scope of the prior art relevant to the Asserted Patents found in, inter alia, the prosecution histories
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`of the Asserted Patents or related patents and/or patent applications, any testimony or declarations
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`of the named inventors concerning the Asserted Patents or related patents, and any papers or
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`evidence submitted by Plaintiff in connection with this litigation, any other pending or future
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`-12-
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`IPR2022-00681
`PATENT OWNER, EX 2002
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`
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`litigation brought by Plaintiff involving the Asserted Patents or related patents, or inter partes
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`review proceedings involving the Asserted Patents or related patents. Defendants also may
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`establish what was known to a person having ordinary skill in the art through treatises, published
`
`industry standards other publications, products, and/or testimony.
`
`a. The ’651 Patent
`
`1. Identification of Prior Art
`
`The tables below list prior art that anticipates and/or renders obvious one or more of the
`
`asserted claims. The attached claim charts in Exhibits A1-A18 demonstrate where each limitation
`
`of the claims is found in certain of the references listed below, either expressly or inherently in the
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`larger context of the passage, as understood by a person having ordinary skill in the art. The
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`following patents, publications, products and/or services are prior art under at least 35 U.S.C. §§
`
`102(a), (b), or (e).
`
`a. Prior Art Patents, Patent Publications, And Printed Publications To
`The Asserted Claims of the ’651 Patent.
`
`Exhibit
`
`Reference
`
`International Publication No. WO
`01/22480
`U.S. Patent No. 6,940,582
`
`Application
`Patent
`Japanese
`Publication No. JP H11-274031
`U.S. Patent No. 6,327,026
`
`Sluijk et al., Performance results of a
`new
`generation
`of
`300-mm
`lithography
`systems,
`Optical
`Microlithography XIV, Proceedings
`of SPIE Vol. 4346, 544-557 (2001)
`U.S. Patent No. 6,416,635
`
`U.S. Patent No. 6,086,727
`
`A1
`
`A1
`
`A2
`
`A2
`
`A4
`
`A5
`
`A6
`
`
`
`
`
`Filing /
`Priority
`Date
`September
`20, 1999
`May
`2001
`March
`1998
`March
`1999
`N/A
`
`21,
`
`20,
`
`17,
`
`Date of Issue
`or
`Publication
`March
`29,
`2001
`September 6,
`2005
`October
`1999
`December 4,
`2001
`February 25,
`2001
`
`8,
`
`Short
`Cite
`
`Tanaka
`
`Tanaka
`’582
`Wakui
`
`Wakui
`’026
`Sluijk
`
`24,
`
`July
`1995
`June 5, 1998
`
`July 9, 2002 Hurwitt
`
`July 11, 2000 Pinarbasi
`
`-13-
`
`
`
`IPR2022-00681
`PATENT OWNER, EX 2002
`
`
`
`Exhibit
`
`Reference
`
`A7
`
`A8
`
`A9
`
`A10
`
`A11
`
`A15
`
`A16
`
`A17
`
`A18
`
`U.S. Patent App. Pub. No.
`2002/0039179
`U.S. Patent No. 6,258,220
`
`European Patent Appl. No.
`EP 0 973 067
`U.S. Patent No. 6,861,614
`
`International Publication No. WO
`99/005703
`Application
`Patent
`Japanese
`Publication No. JP H 6-145974
`U.S. Patent No. 6,284,006
`
`SEMICON West 2000, Launching
`A New Era
`In Productivity
`(ASML-NL_00002544)
`U.S. Patent No. 6,707,529
`
`Butler, et al., “Scanning stage for
`exposure tools,” Microlithography
`World (Spring 1999)
`U.S. Patent No. 6,068,784
`
`U.S. Patent No. 6,251,792
`
`U.S. Patent No. 4,836,905
`
`U.S. Patent No. 6,538,720
`
`U.S. Patent No. 4,952,858
`
`International Publication No. WO
`00/058994
`U.S. Patent No. 6,961,113
`
`U.S. Patent No. 6,133,982
`
`European Patent Appl. No.
`EP 1 030 351
`U.S. Patent No. 5,474,647
`
`-14-
`
`Short
`Cite
`
`Date of Issue
`or
`Publication
`April 4, 2002 Tanaka
`’179
`July 10, 2001 Dordi
`
`19,
`
`Loopstra
`
`1,
`
`Tanabe
`
`4,
`
`Li
`
`Filing /
`Priority
`Date
`October
`2001
`April
`1999
`January
`July
`2000
`1999
`July 7, 2000 March
`2005
`February
`1999
`May 27, 1994 Hoshino
`’974
`Siefering
`
`4,
`
`8,
`
`15,
`
`23,
`
`July
`1997
`October 29,
`1992
`November
`15, 1999
`N/A
`
`September 4,
`2001
`July 2000
`
`SEMICO
`N
`
`February 12,
`1999
`N/A
`
`16,
`
`March
`2004
`Spring 1999
`
`Aoki
`
`Butler
`
`31,
`
`16,
`
`October 3,
`1989
`July
`1990
`July
`1987
`February 28,
`2001
`May
`1988
`March 1999,
`31
`May
`1999
`November
`15, 1996
`November
`12, 1997
`November
`15, 1993
`
`18,
`
`28,
`
`May 30, 2000 Collins
`’784
`June 26, 2001 Collins
`’792
`June 6, 1989 Davis
`
`25,
`
`28,
`
`5,
`
`March
`2003
`August
`1990
`October
`2000
`November 1,
`2005
`October 17,
`2000
`August
`2000
`December 12,
`1995
`
`23,
`
`Galburt
`
`Galburt
`’858
`Hao
`
`Hayashi
`
`Inoue
`
`Magome
`
`Poultney
`
`IPR2022-00681
`PATENT OWNER, EX 2002
`
`
`
`
`
`Exhibit
`
`Reference
`
`International Publication No. WO
`99/034257
`U.S. Patent No. 5,877,843
`
`U.S. Patent No. 5,926,690
`
`Zwart et al., “Performance of a Step
`and
`Scan
`System
`for DUV
`Lithography,” Proc. SPIE, Optical
`Microlithography (Mar. 1997)
`Japanese
`Patent
`Application
`Publication No. JP H 10-177942
`Japanese
`Patent
`Application
`Publication No. JP H 6-204107
`Japanese
`Patent
`Application
`Publication No. JP H 10-125586
`U.S. Patent No. 6,614,050
`
`U.S. Patent No. 6,512,571
`
`Patent
`Unexamined
`Japanese
`Application Publication No. 2001-
`143984
`U.S. Patent No. 5,701,041
`
`Application
`Patent
`Japanese
`Publication No. JP H 07-111238
`European Patent Application No. EP
`1 037 117
`
`Filing /
`Priority
`Date
`December
`29, 1997
`September
`12, 1995
`May
`1997
`N/A
`
`28,
`
`October 16,
`1996
`December
`25, 1992
`October 16,
`1996
`October 25,
`2000
`April
`1999
`November
`16, 1999
`
`28,
`
`3,
`
`October
`1994
`October 12,
`1993
`February 24,
`2000
`
`Japanese Patent Publication No. JP-
`A-5-234954
`
`February 24,
`1992
`
`Date of Issue
`or
`Publication
`July 8, 1999
`
`Short
`Cite
`
`Sperling
`
`2,
`
`Takagi
`
`March
`1999
`July 20, 1999 Toprac
`
`March 1997
`
`Zwart
`
`June 30, 1998 Kida
`
`July 22, 1994 Nose
`
`May 15, 1998 Hoshino
`’586
`Yamada
`
`September 2,
`2003
`January
`2003
`May 25, 2001 Sai
`
`28,
`
`Hara
`
`25,
`
`December 23,
`1997
`April
`1995
`September
`20, 2000
`
`September
`10, 1993
`
`Akutsu
`
`Akutsu
`’238
`Jasper
`
`
`Ishida
`
`
`
`
`
`-15-
`
`
`
`IPR2022-00681
`PATENT OWNER, EX 2002
`
`
`
`
`
`b. Prior Art Systems/Services To The Asserted Claims of the ’651
`Patent
`
`Exhibit
`
`System/Service
`
`Relevant
`Dates
`
`Persons/Entities
`Involved in
`Prior Use, Sale,
`or Offers for
`Sale
`Texas
`ASML;
`Instruments
`
`Short Cite
`
`TWINSCA
`N
`
`ASML
`
`PAS
`
`Nikon
`
`NSR
`
`Canon
`
`FPA
`
`Applied
`Materials
`
`Centura
`
`A3
`
`A12
`
`A13
`
`A14
`
`N/A
`
`ASML PAS System
`
`Nikon NSR System
`
`Canon FPA System
`
`ASML TWINSCAN™ System At least as
`early as
`November
`8, 2000
`At least as
`early as
`November
`8, 2000
`
`At least as
`early as
`November
`8, 2000
`
`At least as
`early as
`November
`8, 2000
`
`1995
`
`Applied Materials Centura
`
`2. Obviousness Combinations
`
`To the extent that any one of the anticipation references is found not to disclose a limitation
`
`recited in the asserted claims from the ’651 patent, it would have been obvious to one of ordinary
`
`skill in the art at the time of the alleged invention of the ’651 patent either (i) to modify the
`
`reference to include this limitation and any remaining limitations of this claim and any claim(s)
`
`from which this claim depends and/or (ii) to combine said reference with any other of the
`
`references in Exhibits A1 to A18 and/or with a person having ordinary skill in the art’s
`
`(“POSITA’s”) general knowledge. Generally, motivation to combine any of these references with
`
`
`
`
`
`-16-
`
`
`
`IPR2022-00681
`PATENT OWNER, EX 2002
`
`
`
`
`
`others exists within the references themselves, as well as within the knowledge of those of ordinary
`
`skill in the art at the relevant time. A person having ordinary skill in the art would have been
`
`motivated to combine any of the references described in attached Exhibits A1 to A18, including
`
`for the reasons described below. A person having ordinary skill in the art at the time of filing of
`
`the asserted ’651 patent would have understood the references listed above, alone or in
`
`combination, to contain explicit and/or implicit teaching, suggestion, and/or rationales to combine
`
`them for at least the following exemplary reasons.
`
`Defendant contends that it would have been obvious to modify the above-listed prior art to
`
`include any allegedly missing element, in view of the knowledge of one of ordinary skill in the art,
`
`the admitted prior art of the ’651 patent, and/or in combination with any of the other prior art
`
`references identified for the ’651 patent. By way of example, and without limitation, Defendant
`
`provides the following exemplary combinations for particular claim limitations based on teachings
`
`of the cited prior art references. Defendant reserves the right to rely upon any combination of prior
`
`art references whether listed herein or otherwise.
`
`A person of ordinary skill in the art having knowledge of the above-listed patents, articles,
`
`and systems, among other things, would be motivated, taught, and suggested to combine the prior
`
`art discussed in Exhibits A1 to A18 with one another, in any number of ways, including as detailed
`
`below.
`
`As a threshold matter, the Asserted Claims of the ’651 patent simply arrange old elements
`
`known in the field of semiconductor fabrica