Trials@uspto.gov
`571-272-7822
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` Paper 12
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` Entered: November 30, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ASML NETHERLANDS B.V., EXCELITAS TECHNOLOGIES CORP.,
`and QIOPTIQ PHOTONICS GMBH & CO. KG,
`Petitioner,
`
`v.
`
`ENERGETIQ TECHNOLOGY, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01362
`Patent 8,969,841 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
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`571-272-7822
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` Paper 12
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` Entered: November 30, 2015
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ASML NETHERLANDS B.V., EXCELITAS TECHNOLOGIES CORP.,
`and QIOPTIQ PHOTONICS GMBH & CO. KG,
`Petitioner,
`
`v.
`
`ENERGETIQ TECHNOLOGY, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01362
`Patent 8,969,841 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2015-01362
`Patent 8,969,841 B2
`
`
`
`I.
`
`INTRODUCTION
`
`ASML Netherlands B.V., Excelitas Technologies Corp., and Qioptiq
`
`Photonics GmbH & Co. KG (collectively, “Petitioner”) filed a Petition
`
`requesting an inter partes review of claims 1–3 and 7 of U.S. Patent
`
`No. 8,969,841 B2 (Ex. 1001, “the ’841 patent”). Paper 4 (“Pet.”). Energetiq
`
`Technology, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 10
`
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a).
`
`For the reasons set forth below, we institute an inter partes review as
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`to claims 1–3 and 7 of the ’841 patent.
`
`A. Related Matter
`
`The parties indicate that the ’841 patent is asserted in Energetiq
`
`Technology, Inc. v. ASML Netherlands B.V., No. 1:15-cv-10240-LTS
`
`(D. Mass.), and identify related proceedings. Pet. 1; Paper 11, 2–3.
`
`B. The ’841 Patent
`
`The ’841 patent claims under 35 U.S.C. § 120, through a series of
`
`continuation and continuation-in-part applications, the benefit of the filing
`
`date of an application filed March 31, 2006. Ex. 1001, at [63]; Ex. 1002.
`
`The ’841 patent discloses a light source comprising a laser that ionizes a gas
`
`within a chamber to produce a plasma-generated light. Id. at Abs.
`
`According to the ’841 patent, such a light source can be used as a source of
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`illumination in a semiconductor photolithographic system. Id. at 1:31–39.
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`2
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`Figure 1 of the ’841 patent illustrates a block diagram of a light
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`source, and is reproduced below with annotations added.
`
`
`
`As shown in annotated Figure 1, light source 100 includes laser 104,
`
`chamber 128, and ignition source 140. Id. at 14:40–16:5. Laser 104 outputs
`
`laser beam 116 via fiber optic element 108. Id. Collimator 112 directs the
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`laser beam to beam expander 118, which produces laser beam 122 and
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`directs it to optical lens 120. Id. Optical lens 120 focuses the beam to
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`produce smaller diameter laser beam 124 and directs it to region 130, where
`
`plasma 132 is generated along with emitting light 136. Id.
`
`C. Illustrative Claim
`
`Claims 2, 3, and 7 each, directly or indirectly, depend from claim 1,
`
`which is reproduced below.
`
`1. A laser driven light source comprising:
`
`a sealed pressurized chamber having a gas at a pressure greater
`than 10 atmospheres during operation;
`
`an ignition source for ionizing the gas within the chamber; and
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`an at least substantially continuous laser for providing energy
`within a wavelength range from about 700 nm to 2000 nm to
`the ionized gas to sustain a plasma within the chamber to
`produce a plasma-generated light having wavelengths greater
`than 50 nm,
`
`the chamber further comprising a region of material that is
`transparent to at least a portion of the plasma-generated light
`and that allows said portion plasma-generated light to exit the
`chamber.
`
`Ex. 1001, 48:44–57 (emphases added).
`
`D. Prior Art Relied Upon
`
`
`
`Petitioner relies upon the following prior art references1:
`
`Gärtner
`Kensuke
`Mourou
`
`May 3, 1985
` FR 2554302 A1
`Jan. 12, 2006
` JP 2006010675 A
` WO 2004/097520 A2 Nov. 11, 2004
`
`(Ex. 1004)
`(Ex. 1005)
`(Ex. 1014)
`
`WILLIAM T. SILFVAST, LASER FUNDAMENTALS 1–6, 199–222, 565–68
`(2d ed. 2004). Ex. 1006 (“Silfvast”).
`
`
`
`1 The citations to Gärtner and Kensuke are to their certified
`English-language translations in Exhibits 1004 and 1005, respectively.
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`4
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`E. Asserted Grounds of Unpatentability
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`Petitioner asserts the following grounds (Pet. 20, 43):
`
`Claims
`
`Basis
`
`References
`
`1–3 and 7
`
`§ 103(a)
`
`Gärtner in view of Mourou and Silfvast2
`
`1–3 and 7
`
`§ 103(a)
`
`Gärtner in view of Kensuke and Silfvast
`
`
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed
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`Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015). Here, Petitioner
`
`proposes constructions for “light source” and “laser driven light source,”
`
`which are recited in all of the challenged claims. Pet. 10–12. At this
`
`juncture, Patent Owner does not challenge Petitioner’s proposed
`
`constructions. See generally Prelim. Resp.
`
`Upon review of the present record, we determine that Petitioner’s
`
`constructions are consistent with the broadest reasonable construction.
`
`
`
`2 Silfvast is omitted inadvertently from each statement of the asserted
`grounds, although discussed in the Petitioner’s analysis. Pet. 16–19, 28–40,
`45–54. Therefore, we treat the statements of the asserted grounds as mere
`harmless error and presume that Petitioner intended to assert that the
`challenged claims are unpatentable based, in part, on Silfvast.
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`For purposes of this Decision, we adopt the following claim constructions:
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`Claim Term
`
`Construction
`
`light source
`
`a source of electromagnetic radiation in the ultraviolet
`(“UV”), extreme UV, vacuum UV, visible, near
`infrared, middle infrared, or far infrared regions of the
`spectrum, having wavelengths within the range of 10
`nm to 1,000 µm
`
`laser driven light
`source
`
`a light source having a laser applying energy to
`generate light
`
`
`
`“substantially continuous laser”
`
`For purposes of this Decision, we find it necessary to construe the
`
`claim term “substantially continuous laser” expressly. Claim 1 recites “an at
`
`least substantially continuous laser for providing energy within a wavelength
`
`range from about 700 nm to 2000 nm.” Ex. 1001, 48:49–51. The
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`Specification of the ’841 patent indicates that a light source can include a
`
`pulse laser or a continuous wave laser. Id. at 15:60–62. For instance, a high
`
`pulse rate laser that provides substantially continuous laser energy can be
`
`used. Id. at 16:15–18. A continuous wave laser emits radiation
`
`continuously or substantially continuously rather than in short bursts, as in a
`
`pulsed laser. Id. at 4:53–55. The Specification also discloses:
`
`Efficient, cost effective, high power lasers (e.g., fiber lasers and
`direct diode lasers) are recently available in the NIR (near
`infrared) wavelength range from about 700 nm to about 2000
`nm. Energy in this wavelength range is more easily transmitted
`through certain materials (e.g., glass, quartz and sapphire) that
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`are more commonly used to manufacture bulbs, windows and
`chambers.
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`Id. at 16:6–12.
`
`In light of the Specification, we construe the claim term a
`
`“substantially continuous laser” broadly, but reasonably, to encompass a
`
`continuous wave laser, a high pulse rate laser, and a laser that provides
`
`substantially continuous laser energy.
`
`B. Principles of Law
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter 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 said
`
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
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`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`7
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`C. Obviousness
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`Petitioner asserts that claims 1–3 and 7 are unpatentable under
`
`§ 103(a) 3 as obvious over Gärtner in view of Mourou and Silfvast, and as
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`obvious over Gärtner in view of Kensuke and Silfvast. Pet. 20–59. As
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`support, Petitioner proffers a Declaration of Dr. J. Gary Eden, who has been
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`retained as an expert witness for the instant proceeding. Ex. 1003 ¶¶ 19–20.
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`Patent Owner counters that neither prior art combination renders
`
`claims 1–3 and 7 obvious. Prelim. Resp. 8, 32. In particular, Patent Owner
`
`argues that the combinations do not disclose a “substantially continuous
`
`laser,” as recited in claim 1, and that Petitioner fails to provide sufficient
`
`reasons to combine the prior art teachings. Id. at 9–51.
`
`In our discussion below, we begin with a brief summary of the cited
`
`prior art and then we address the parties’ contentions in turn, focusing on the
`
`deficiencies alleged by Patent Owner.
`
`1. Brief Summary of the Cited Prior Art
`
`Gärtner
`
`Gärtner discloses a radiation light source for a photolithographic
`
`system, illuminating a photoresist layer on a semiconductor wafer.
`
`Ex. 1004, 1:1–4. Figure 1 of Gärtner is reproduced below with annotations
`
`added.
`
`
`
`3 Because, on this record, the effective filing date for the ’841 patent is
`before March 16, 2013, the pre-Leahy-Smith America Invents Act, Pub. L.
`No. 112-29, 125 Stat. 284 (2011), version of § 103 applies.
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`As shown in annotated Figure 1 of Gärtner, Gärtner’s light source
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`includes continuous CO2 laser 9, laser 10 (an ignition source), and
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`chamber 1. Id. at 4:31–5:12. Plasma 14 is generated inside chamber 1 and
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`emits light 15 into the downstream optical system through window 8. Id.
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`
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`Mourou
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`Mourou discloses a light source for semiconductor photolithography.
`
`Ex. 1014 ¶ 1. Mourou’s light source includes a titanium sapphire laser for
`
`providing energy with a wavelength of 800 nm. Id. ¶ 22.
`
`Kensuke
`
`Kensuke discloses a light source that provides a continuous spectrum
`
`in the UV range. Ex. 1005, Abs. Kensuke’s light source includes a titanium
`
`sapphire laser that generates energy having a wavelength range of about 500
`
`to 1,100 nm. Id. ¶ 14.
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`Silfvast
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`Silfvast is a book on laser fundamentals. Ex. 1006, 1. Silfvast states
`
`that titanium sapphire lasers “can be operated over a wavelength range of
`
`660–1,180 nm and thus has the broadest gain bandwidth of any laser.” Id. at
`
`565. According to Silfvast, “[c]ommercial titanium sapphire lasers are . . .
`
`typically pumped with either argon ion lasers (for [continuous wave]
`
`operation) or frequency-doubled Nd:YAG or Nd:YLF lasers (for pulsed
`
`operation).” Id.
`
`Substantially continuous laser
`
`2. Discussion
`
`Claim 1 recites “an at least substantially continuous laser for
`
`providing energy within a wavelength range from about 700 nm to 2000 nm
`
`to the ionized gas to sustain a plasma within the chamber to produce a
`
`plasma-generated light having wavelengths greater than 50 nm.” Ex. 1001,
`
`48:49–53. By virtue of their dependency, each of claims 2, 3, and 7 also
`
`requires this limitation.
`
`Petitioner asserts that Gärtner discloses a light source comprising a
`
`continuous CO2 laser for ionizing a gas within a chamber to sustain a
`
`plasma, which produces a UV light having wavelengths greater than 50 nm.
`
`Pet. 28–29, 45–46; Ex. 1004, 4:31–5:12. Petitioner acknowledges that
`
`Gärtner does not disclose a laser that provides “energy within a wavelength
`
`range from 700 nm to 2000 nm,” as recited in claim 1. Pet. 29, 47.
`
`Nevertheless, Petitioner contends that such a laser was well-known in the art
`
`at the time of the invention because Mourou, Kensuke, and Silfvast each
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`disclose a titanium sapphire laser that generates energy having a wavelength,
`
`or a range, falling squarely within the claimed range. Id. at 29–40, 47–54;
`
`Ex. 1005 ¶ 14 (500 to 1,100 nm); Ex. 1006, 565–66 (660–1,180 nm);
`
`Ex. 1014 ¶ 22 (800 nm). Petitioner further maintains that it would have been
`
`obvious to substitute a titanium sapphire laser for Gärtner’s continuous CO2
`
`laser, in view of Mourou and Silfvast, or in view of Kensuke and Silfvast.
`
`Pet. 29–40, 47–54.
`
`Patent Owner disagrees and advances two arguments. Prelim. Resp.
`
`8–54. First, Patent Owner argues that neither Mourou nor Kensuke discloses
`
`a continuous laser. Id. at 10, 29–33, 51–54.
`
`It was known in the art at the time of the invention, however, that
`
`“[c]ommercial titanium sapphire lasers are . . . typically pumped with either
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`argon ion laser (for [continuous wave] operation) or frequency-doubled
`
`Nd:YAG or ND:YLF lasers (for pulsed operation),” as described by Silfvast.
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`Ex. 1006, 565–66 (emphasis added). Therefore, one with ordinary skill in
`
`the art would have understood that a titanium sapphire laser having a
`
`continuous wave operation (“continuous titanium sapphire laser”) was
`
`commercially available at the time of the invention. Dr. Eden testifies that
`
`such an artisan would have utilized a continuous titanium sapphire laser in
`
`Gärtner’s light source “to achieve a 100% duty cycle which, in turn,
`
`provides uninterrupted power to the plasma light source,” so that “the
`
`plasma would provide a continuous output of light,” which is desirable for
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`semiconductor photolithography.4 Ex. 1003 ¶¶ 74, 108. On this record, we
`
`credit Dr. Eden’s testimony as it is consistent with the prior art of record.
`
`Second, Patent Owner argues that Mourou generates extreme UV
`
`light, and does not generate UV light, a “light having wavelengths greater
`
`than 50 nm,” as recited in claim 1. Prelim. Resp. 26–29. Patent Owner,
`
`however, attempts to limit Mourou’s teachings narrowly to the particular
`
`examples disclosed in the reference. In an obviousness analysis, a reference
`
`may be relied upon for all that it would have suggested reasonably to one
`
`with ordinary skill in the art. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
`
`804, 807 (Fed. Cir. 1989). The disclosure of a reference is not limited to
`
`specific examples contained in its disclosure. In re Mills, 470 F.2d 649, 651
`
`(CCPA 1972). We are also mindful that prior art must be considered in the
`
`context of the knowledge that a person of ordinary skill in the art would
`
`have had with respect to light sources. See Randall Mfg. v. Rea, 733 F.3d
`
`1355, 1362 (Fed. Cir. 2013). The level of ordinary skill in the art is reflected
`
`by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`
`Cir. 2001).
`
`Here, Mourou illustrates that it was already known in the art to utilize
`
`a titanium sapphire laser in a light source to produce a plasma-generated
`
`
`
`4 Petitioner asserts that one with ordinary skill in the art would have had a
`Ph.D. in physics, electrical engineering, or an equivalent field, and 2–4 years
`of work experience with lasers and plasma, or a master’s degree in physics,
`electrical engineering, or an equivalent field, and 4–5 years of work
`experience with lasers and plasma. Pet. 3; Ex. 1003 ¶ 24. At this juncture,
`Patent Owner does not challenge this assertion. See generally Prelim. Resp.
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`light for semiconductor photolithography. Ex. 1014 ¶¶ 1, 9, 22. Gärtner
`
`teaches that a desired wavelength range for such a light is in the UV
`
`region—wavelengths greater than 50 nm. Ex. 1004, 2:28–30, 3:1–18, 4:31–
`
`5:12. Moreover, Dr. Eden testifies that an ordinarily skilled artisan would
`
`have understood that “laser sustained plasma produces light with a broad
`
`spectrum of wavelengths, with the peak of the spectrum depending on the
`
`power of the laser,” and such an artisan would have adjusted the power to
`
`maintain Gärtner’s desired UV wavelength. Ex. 1003 ¶ 75. In fact, Silfvast
`
`states that titanium sapphire lasers are the most widely used tunable
`
`solid-state lasers. Ex. 1006, 565. And Kensuke discloses a light source
`
`having a titanium sapphire laser to ionize a gas for generating a UV light
`
`(Ex. 1005 ¶¶ 2–3, 14), showing that it is not beyond the skill of an artisan to
`
`utilize a titanium sapphire laser in a light source to produce a UV
`
`plasma-generated light. See KSR, 550 U.S. at 417 (“[I]f a technique has
`
`been used to improve one device, and a person of ordinary skill in the art
`
`would recognize that it would improve similar devices in the same way,
`
`using the technique is obvious unless its actual application is beyond his or
`
`her skill.”); see also id. at 420 (“The second error of the Court of Appeals
`
`lay in its assumption that a person of ordinary skill attempting to solve a
`
`problem will be led only to those elements of prior art designed to solve the
`
`same problem.”).
`
`Based on the evidence currently before us, we determine that
`
`Petitioner has demonstrated sufficiently, for purposes of this Decision, that
`
`Gärtner in view of Mourou and Silfvast, or in view of Kensuke and Silfvast,
`
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`discloses a “substantially continuous laser for providing energy within a
`
`wavelength range from about 700 nm to 2000 nm to the ionized gas to
`
`sustain a plasma within the chamber to produce a plasma-generated light
`
`having wavelengths greater than 50 nm,” as required by claims 1–3 and 7.
`
`Rationale to combine prior art teachings
`
`Patent Owner contends that Petitioner fails to articulate sufficient
`
`reasons to combine Gärtner with Mourou and Silfvast, and to combine
`
`Gärtner with Kensuke and Silfvast. Prelim. Resp. 11–15, 34–40. Patent
`
`Owner also takes the position that the prior art of record teaches away from
`
`replacing Gärtner’s continuous CO2 laser with a shorter wavelength laser,
`
`such as those disclosed in Mourou, Kensuke, and Silfvast. Id. at 15–19, 40–
`
`44. To substantiate its contentions, Patent Owner alleges that Cross5,
`
`Keefer6, and Cremers7 would have discouraged an artisan from using shorter
`
`wavelength lasers. Id.
`
`In an obviousness analysis, prior art must be read in context, taking
`
`account of the knowledge possessed by one with ordinary skill in the art at
`
`the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1259–
`
`1262 (Fed. Cir. 2007). Here, the earliest filing date claimed by the ’841
`
`
`5 U.S. Patent No. 4,780,608, issued Oct. 25, 1988. Ex. 1015 (“Cross”).
`6 Dennis R. Keefer, Laser-Sustained Plasma, in LASER-INDUCED PLASMAS
`AND APPLICATIONS 169–206 (Leon J. Radziemski & David A. Cremers eds.,
`1989). Ex. 1017 (“Keefer”).
`7 David A. Cremers et al., Evaluation of the Continuous Optical Discharge
`for Spectrochemical Analysis, in SPECTROCHIMICA ACTA, Vol. 40B, No. 4, at
`665–79 (1985). Ex. 2002 (“Cremers”).
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`patent is March 31, 2006. Ex. 1001 at [63]. Yet, Patent Owner relies upon
`
`Cross, Keefer, and Cremers, which were published in 1988, 1989, and 1985,
`
`respectively. Those references, at best, show merely the knowledge of an
`
`artisan in the 1980s. Such evidence does not support Patent Owner’s
`
`contentions, as it does not account for the technological advancements in the
`
`relevant art between 1989 and 2006.
`
`As Petitioner points out, laser technology for shorter wavelengths
`
`improved significantly during the 1990s and early 2000s because of the
`
`development of the titanium-doped sapphire and rare earth-doped glass fiber
`
`lasers, making it easier and more desirable to sustain plasmas with shorter
`
`wavelength lasers. Pet. 14–16; Ex. 1003 ¶¶ 42–51; Ex. 1006, 567; Ex. 1022,
`
`148.8 More importantly, by 2004, short wavelength lasers had several
`
`known advantages—e.g., producing energy that can be carried by quartz
`
`optical fibers for long distances and can travel through glass, so that
`
`“high-quality glass lenses can be used to focus the beam down to a minimum
`
`spot size.” Ex. 1016, 1601.9 Dr. Eden testifies that shorter wavelength
`
`lasers also were considerably smaller and more efficient than CO2 lasers.
`
`Ex. 1003 ¶ 48. Dr. Eden further testifies that substituting Gärtner’s
`
`continuous CO2 laser with a shorter wavelength laser would have required
`
`nothing more than routine skill, and a person with ordinary skill in the art
`
`
`
`8 RARE-EARTH-DOPED FIBER LASERS AND AMPLIFIERS 144–170 (Michel J.F.
`Digonnet ed., 2nd ed. 2001). Ex. 1022.
`9 HANDBOOK OF LASER TECHNOLOGY AND APPLICATIONS 1587–1611
`(Colin E. Webb & Julian D.C. Jones eds., 2004). Ex. 1016.
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`would have had a reasonable expectation of success. Id. ¶ 87–88, 117–18.
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`Indeed, as indicated in Silfvast (which was published in 2004), titanium
`
`sapphire lasers were commercially available and the most widely used
`
`tunable solid-state lasers. Ex. 1006, 565. On this record, we credit
`
`Dr. Eden’s testimony as it is consistent with the prior art disclosures.
`
`Upon consideration of the evidence in the present record, we are
`
`persuaded by Petitioner’s explanations and supporting evidence that merely
`
`substituting Gärtner’s continuous CO2 laser with a continuous titanium
`
`sapphire laser that generates energy having shorter wavelengths, in view of
`
`Mourou and Silfvast, or in view of Kensuke and Silfvast, for sustaining a
`
`plasma to produce a UV light is no more than a predictable use of prior art
`
`elements according to their established functions—an obvious improvement.
`
`See KSR, 550 U.S. at 417. At this juncture, Patent Owner does not provide
`
`sufficient or credible evidence that such a substitution would be “uniquely
`
`challenging or difficult for one of ordinary skill in the art,” at the time of the
`
`invention. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
`
`1162 (Fed. Cir. 2007). On this record, we determine that Petitioner has
`
`articulated sufficient reasons to combine Gärtner with Mourou and Silfvast,
`
`and to combine Gärtner with Kensuke and Silfvast.
`
`Conclusion
`
`For the foregoing reasons, we determine that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing on its assertions that
`
`claims 1–3 and 7 are unpatentable over Gärtner in view of Mourou and
`
`Silfvast, and over Gärtner in view of Kensuke and Silfvast.
`
`16
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`IPR2015-01362
`Patent 8,969,841 B2
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`
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`D. Other Considerations
`
`Patent Owner urges the Board to deny one of the two asserted grounds
`
`of unpatentability “because the Petition presents multiple grounds in a
`
`redundant manner and makes no meaningful distinction between them.”
`
`Prelim. Resp. 54–57. We are cognizant that, under 37 C.F.R. § 42.108(a),
`
`the Board has the discretion to deny one or more grounds as being redundant
`
`to an instituted ground. The Board, however, is not required to exercise its
`
`discretion in every proceeding. Here, we observe that Petitioner asserts only
`
`two grounds, both of which involve the same base reference and challenge
`
`the same four claims. As discussed above, we determine that, for each
`
`asserted ground, Petitioner has demonstrated a reasonable likelihood of
`
`prevailing. Given the particular facts of this proceeding, we decline to
`
`exercise our discretion to deny either ground.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that there is a reasonable
`
`likelihood that Petitioner would prevail in challenging claims 1–3 and 7.
`
`We, however, have not made a final determination as to the patentability of
`
`the challenged claims, nor with respect to claim construction.
`
`17
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`IPR2015-01362
`Patent 8,969,841 B2
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`
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`For the foregoing reasons, it is
`
`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted for the following grounds of unpatentability:
`
`Claims
`
`Basis
`
`References
`
`1–3 and 7
`
`§ 103(a)
`
`Gärtner in view of Mourou and Silfvast
`
`1–3 and 7
`
`§ 103(a)
`
`Gärtner in view of Kensuke and Silfvast
`
`
`
`FURTHER ORDERED that no other ground of unpatentability
`
`asserted in the Petition is authorized for this inter partes review; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`
`will commence on the entry date of this decision.
`
`
`
`18
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`IPR2015-01362
`Patent 8,969,841 B2
`
`
`
`PETITIONER:
`
`Donald R. Steinberg
`David L. Cavanaugh
`Michael H. Smith
`
`Wilmer Cutler Pickering Hale & Dorr LLP
`
`Don.Steinberg@wilmerhale.com
`David.Cavanaugh@wilmerhale.com
`MichaelH.Smith@wilmerhale.com
`
`
`PATENT OWNER:
`
`Steven M. Bauer
`Joseph A. Capraro Jr.
`Proskauer Rose LLP
`
`PTABMattersBoston@proskauer.com
`JCapraro@proskauer.com
`
`
`
`
`
`19
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