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,
`Petitioners
`
`v.
`
`Energetiq Technology, Inc.,
`Patent Owner.
`
`Case IPR2016-00127
`
`
`
`DECLARATION OF J. GARY EDEN, PH.D.
`REGARDING U.S. PATENT NO. 8,969,841
`CLAIMS 10, 13, and 14
`
`
`
`
`
`ASML 1103
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`

`
`TABLE OF CONTENTS
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
`
`Page
`
`V. 
`
`BACKGROUND ............................................................................................. 1 
`I. 
`LEGAL PRINCIPLES ..................................................................................... 6 
`II. 
`PERSON OF ORDINARY SKILL IN THE ART .......................................... 8 
`III. 
`IV.  OVERVIEW OF THE ’841 PATENT ............................................................ 8 
`A. 
`Challenged Claims .............................................................................. 10 
`B. 
`Summary of the Prosecution History .................................................. 11 
`CLAIM CONSTRUCTION .......................................................................... 15 
`A. 
`“Light source” ..................................................................................... 15 
`B. 
`“Laser Driven Light Source” ............................................................... 17 
`C. 
`“Light Bulb” ........................................................................................ 18 
`VI.  THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 18 
`A. 
`Laser Sustained Plasma Light Sources Were Known Long
`Before the Priority Date of the ’841 Patent ......................................... 19 
`Sustaining a plasma with a laser at various wavelengths,
`including those up to about 2000 nm, was well known in the art ....... 21 
`VII.  GROUNDS FOR FINDING THE CHALLENGED CLAIMS INVALID ... 28 
`A.  Ground 1: Claims 10, 13, and 14 Are Unpatentable Over
`Gärtner in View of Mourou ................................................................. 28 
`1. 
`Independent Claim 10 .................................................................. 29 
`2.  Dependent Claims ........................................................................ 49 
`Ground 2: Claims 10, 13, and 14 Are Unpatentable Over
`Gärtner in View of Kensuke ................................................................ 51 
`1. 
`Independent Claim 10 .................................................................. 53 
`2.  Dependent Claims ........................................................................ 64 
`VIII.  RESPONSE TO ARGUMENTS RAISED BY PATENT OWNER IN ITS
`PRELIMINARY INJUNCTION MOTION .................................................. 65 
`A. 
`Patent Owner’s Arguments Regarding Objective Indicia of
`Non-Obviousness ................................................................................ 65 
`IX.  AVAILABILITY FOR CROSS-EXAMINATION ...................................... 66 
`
`B. 
`
`B. 
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
`RIGHT TO SUPPLEMENT .......................................................................... 67 
`JURAT ........................................................................................................... 68 
`
`X. 
`XI. 
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`ii
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`I, J. Gary Eden, Ph.D., declare as follows:
`
`U.S. Patent 8,969,841
`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 1985, I was named the Director of the Laboratory
`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
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`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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`lighting, “light tiles”, that are thin and flat. This culminated in the formation of a
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`U.S. Patent 8,969,841
`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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`Aaron Kressel Award from the Photonics Society of the IEEE, and the Harold E.
`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
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`Edgerton Award from the International Society for Optical Engineering. I was the
`
`Fulbright-Israel Distinguished Chair in the Physical Sciences and Engineering
`
`from 2007 to 2008. I am a Fellow of the American Physical Society, the Optical
`
`Society of America, the Institute of Electrical and Electronics Engineers, the
`
`American Association for the Advancement of Science (AAAS), and the SPIE
`
`(International Society for Optical Engineering).
`
`8.
`
`I taught/teach courses in laser physics, electromagnetics (including
`
`optics, optical waveguides, antennas), plasma physics, semiconductor electronic
`
`devices, electromagnetics, and analog signal processing, among others. I have
`
`directed the dissertations of 47 individuals who received the Ph.D. degree in
`
`Physics, Electrical and Computer Engineering, or Materials Science and
`
`Engineering.
`
`9.
`
`I have also served as Assistant Dean in the College of Engineering,
`
`Associate Dean of the Graduate College, and Associate Vice-Chancellor for
`
`Research.
`
`10.
`
`I have authored or co-authored over 290 peer-reviewed academic
`
`publications in the fields of laser physics, plasma physics, atomic and molecular
`
`physics, quantum electronics. I have served as Editor-in-Chief of the IEEE
`
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`
`Journal of Quantum Electronics, and am currently Editor-in-Chief of Progress in
`
`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
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`Quantum Electronics and 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),
`
`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 seventy (75) 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 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
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`17.
`
`I have reviewed the specification and claims of U.S. Patent No.
`
`8,969,841 (the “’841 patent”; Ex. 1101). I have been informed that the ’841 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. 1113).
`
`18.
`
`I have also reviewed the following references, all of which I
`
`understand to be prior art to the ’841 patent:
`
` French Patent Publication No. FR2554302A1, published May 3, 1985
`(“Gärtner,” Ex. 1104), with English Translation.
`
` International Publication WO-2004097520, published November 11,
`2004 (“Mourou,” Ex. 1114).
`
` Japanese Patent Publication No. 2006010675A, filed on February 24,
`2005 and published January 12, 2006 (“Kensuke,” Ex. 1105), with
`English Translation.
`
`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 ’841 patent.
`
`II. LEGAL PRINCIPLES
`22.
`I have been informed that a claim is invalid as anticipated under 35
`
`U.S.C. § 102(a) if “the invention was known or used by others in this country, or
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`patented or described in a printed publication in this or a foreign country, before
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
`
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`the invention thereof by the applicant for patent.” I have also been informed that a
`
`claim is invalid as anticipated under 35 U.S.C. § 102(b) if “the invention was
`
`patented or described in a printed publication in this or a foreign country or in
`
`public use or on sale in this country, more than one year prior to the date of the
`
`application for patent in the United States.” Further I have been informed that a
`
`claim is invalid as anticipated under 35 U.S.C. § 102(e) if “the invention was
`
`described in … an application for patent, published under section 122(b), by
`
`another filed in the United States before the invention by the applicant for patent
`
`….” It is my understanding that for a claim to be anticipated, all of the limitations
`
`must be present in a single prior art reference, either expressly or inherently.
`
`23.
`
`I have been informed that a claim is invalid as obvious under 35
`
`U.S.C. § 103(a):
`
`
`
`if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have
`been obvious at the time the invention was made to a person having
`ordinary skill in the art to which [the] subject matter pertains.
`
`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
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`understand that when there are known elements that perform in known ways and
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
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`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
`24. A person of skill in the art at the time of the alleged invention of the
`
`’841 patent would have had a Ph.D. in physics, electrical engineering, or an
`
`equivalent field and 2-4 years of work experience with lasers and plasma, or a
`
`master’s degree in physics, electrical engineering, or an equivalent field and 4-5
`
`years of work experience with lasers and plasma.
`
`IV. OVERVIEW OF THE ’841 PATENT
`25. The ’841 patent family is directed to a laser sustained plasma light
`
`source for use in, for example, testing and inspection for semiconductor
`
`manufacturing. As depicted in Fig. 1 below, the light source includes a sealed
`
`pressurized chamber containing gas (green), an ignition source for ionizing the gas
`
`(blue), a laser providing energy to the plasma (red), a light-generating plasma, and
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`the chamber having a transparent region to allow the plasma-generated light to
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
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`exit. (’841 patent, claim 10 (Ex. 1101).)
`
`ʼ841 Patent, Figure 1 (Ex. 1101)
`
`
`
`26. According to the ’841 patent, prior art light sources relied upon
`
`electrodes to both generate and sustain the plasma, which resulted in wear and
`
`contamination. (’841 patent, 1:42-58 (Ex. 1101).) Thus, a need arose for a way to
`
`sustain plasma without relying on an electrical discharge from electrodes. (’841
`
`patent, 1:59-63 (Ex. 1101).)
`
`27. The alleged invention of the patent family involves using a laser to
`
`provide energy to sustain the plasma for a light source. The ’841 continuation adds
`
`claims that require that the laser operate at a wavelength of up to 2000 nm.
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
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`28. As discussed below, there was nothing new or inventive in 2006 about
`
`sustaining a plasma with a laser to produce high brightness 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 operating at a
`
`wavelength of up to 2000 nm. As the patent admits, several such lasers (and high
`
`power fiber lasers, in particular) had recently become more widely available and
`
`incorporating any of these lasers into laser-generated and sustained plasma light
`
`sources was straightforward. Mourou and Kensuke provide two examples of
`
`systems that provide energy to a plasma with a laser operating at a wavelength of
`
`up to 2000 nm. It would have been obvious to combine Mourou and Kensuke’s
`
`teachings with Gärtner to arrive at the claimed invention.
`
`A. Challenged Claims
`
`29. Petitioner challenges claims 10, 13, and 14 of the ’841 patent.
`
`Independent claim 10 is reproduced below with added letters and numerals in
`
`brackets for ease of reference:
`
`[10p] A laser driven light source, comprising:
`[10a] a light bulb defining a sealed pressurized chamber containing a
`gas at an operating pressure of greater than 10 atmospheres;
`
`10
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
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`[10b] an ignition source for ionizing a gas within the light bulb,
`[10c] at least one at least substantially continuous laser for providing
`energy within a wavelength range of up to about 2000 nm to the
`ionized gas to sustain a plasma within the light bulb to produce a
`plasma-generated light having output wavelengths greater than 50 nm,
`[10d] the sealed pressurized chamber further comprising a region of
`material which is transparent to at least a portion of the plasma-
`generated light, the region of material allowing said portion of the
`plasma-generated light to exit the light bulb and illuminate a surface.
`
`(’841 patent, claim 10 (Ex. 1101).)
`
`B.
`
`Summary of the Prosecution History
`
`30. The ’841 patent (Ex. 1101) issued from U.S. Patent Appl. No.
`
`14/510,959, filed on October 9, 2014. The ’841 patent application is a
`
`continuation of the ’000 patent, which is a continuation of the ’138 patent, which is
`
`a continuation in part of the ’786 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).) As explained below, the Examiner
`
`allowed the claims of the ʼ841 patent only after the applicant amended the claims
`
`to include a limitation regarding the laser wavelength.
`
`31. On November 12, 2014, the Examiner rejected the claims in light of
`
`various prior art references. (Office Action dated Nov. 12, 2014 (Ex. 1108).) The
`
`claims were primarily rejected based on U.S. 4,780,608 (“Cross”) and U.S.
`
`11
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`

`
`6,541,924 (“Kane”). The Office Action asserted that “Cross discloses a light
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
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`source comprising a pressurized chamber in which a laser sustained plasma emits
`
`[] light,” and that Kane discloses a ultraviolet light source comprising a pressurized
`
`chamber and an electrode ignition source. (Id. at 2-4.)
`
`32. On December 17, 2014, the applicant responded by amending the
`
`claims to include features such as a “sealed” chamber, a pressure above 10 atm,
`
`wavelength ranges for the laser and the light produced by the plasma, and a
`
`chamber that has a transparent region. (Applicant’s Amendment and Response
`
`dated Dec. 17, 2014 at 3 (Ex. 1109).) For example, pending claim 15 (now claim
`
`10) was amended as shown below:
`
`
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`12
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
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`(Id. at 4-5.)
`
`33. The applicant also added dependent claims further specifying the
`
`pressure and properties of the laser and plasma. The applicant argued that the
`
`claims, as amended to include the additional limitations, were distinct from the
`
`prior art because allegedly “none of the references of record produce a plasma
`
`generated light having output wavelengths greater than 50 nm.”1 (Id. at 11.)
`
`
`1 Patent Owner was in fact mistaken. For example, Kane discloses a “plasma
`
`lamp” that is “capable of providing a source of high-peak-power incoherent
`
`ultraviolet (UV) light (80-350 nm, more typically 11-320 nm).” (U.S. Patent No.
`
`6,541,924 (“Kane”) at 7:53-59 (Ex. 1118).)
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`34. On January 22, 2015, the newly amended claims were allowed.
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
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`(Notice of Allowability dated Jan. 22, 2015 at 2 (Ex. 1110).) With respect to
`
`pending claims 1, 15 (now claim 10), and 20, the Examiner introduced Manning
`
`U.S. PGPUB No. 2006/0152128 (“Manning”) but noted that Manning did not
`
`disclose the use of a laser with a wavelength in the 700-2000 nm interval to create
`
`a plasma that produced electromagnetic radiation with a wavelength greater than
`
`50 nm. (Id.) Regarding Cross, the Examiner stated that in addition to not
`
`disclosing a laser with a wavelength from 700-2000 nm, the reference did not
`
`disclose a transparent region of the chamber and was concerned with producing
`
`ions instead of light produced by a plasma. (Id. at 2-3.) The Examiner also stated
`
`that it would not have been obvious to combine Manning and Cross because “they
`
`belong to different fields of endeavor; namely, Manning uses a plasma to generate
`
`light, while Cross uses a plasma to generate ions.” (Id. at 3.)
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
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`35. The Examiner, however, did not consider Gärtner or Mourou, nor was
`
`the Examiner provided a complete English translation of Kensuke.2 As discussed
`
`below, Gärtner in view of Mourou and Gärtner in view of Kensuke each render the
`
`challenged claims unpatentable as obvious in view of the combinations below.
`
`V. CLAIM CONSTRUCTION
`A.
` “Light source”
`36.
`
` The term “light source” is recited in challenged claims 10, 13, and 14.
`
`“Light source” should be construed to mean “a source of electromagnetic radiation
`
`in the extreme ultraviolet (10 nm to 100 nm), vacuum ultraviolet (100 nm to 200
`
`nm), ultraviolet (200 nm to 400 nm), visible (400 to 700 nm), near-infrared (700
`
`nm to 1,000 nm (1µm)), middle infrared (1 µm to 10 µm), or far infrared (10 µm to
`
`1,000 µm) regions of the spectrum.”
`
`
`2 Kensuke (JP 2006-10675) was included in an Information Disclosure Statement
`
`filed by applicant on October 9, 2014. However, applicant only submitted an
`
`English translation for the abstract and Kensuke was not used in any of the
`
`Examiner’s rejections. Notably, as described further below, Kensuke discloses the
`
`use of a laser with a wavelength of less than 2000 nm to create a plasma that
`
`produces a light with a wavelength greater than 50 nm, but the abstract does not
`
`provide this disclosure. (See infra at section VII.B.1.d).)
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`37. The ordinary and customary meaning of “light source”3 is a source of
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
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`electromagnetic radiation in the extreme ultraviolet (10 nm to 100 nm), vacuum
`
`ultraviolet (100 nm to 200 nm), ultraviolet (200 nm to 400 nm), visible (400 to 700
`
`nm), near-infrared (700 nm to 1,000 nm (1µm)), middle infrared (1 µm to 10 µm),
`
`or far infrared (10 µm to 1,000 µm) regions of the spectrum. (See, e.g., William T.
`
`Silfvast, Laser Fundamentals at 4 (2d Ed., 2004) (Ex. 1106).) The Patent Owner
`
`publishes a data sheet which is consistent with the ordinary and customary
`
`meaning in recognizing that “light source” includes EUV wavelengths. (See, e.g.,
`
`Energetiq EQ-10M Data Sheet at 2 (describing Energetiq’s EQ-10M product
`
`operating at 13.5 nm as an “EUV [Extreme Ultraviolet] Light Source”) (Ex.
`
`1107).)
`
`38. The ’841 patent does not provide a definition of the term “light
`
`source” and uses the term consistent with the ordinary and customary meaning of
`
`the term. Consistent with the ordinary and customary meaning of “light source,”
`
`
`3 The term “light” is sometimes used more narrowly to refer only to visible light.
`
`However, references to “ultraviolet light” in the ’841 patent make clear that the
`
`broader meaning is intended because ultraviolet light has a wavelength shorter than
`
`that of visible light. (See, e.g., ’841 patent, 7:52; 17:13; 18:43; 20:32-33; 23:29;
`
`26:33) (Ex. 1101).)
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`the ’841 patent states that parameters such as the wavelength of the light from a
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
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`light source vary depending upon the application. (’841 patent, 1:39-41 (Ex.
`
`1101).) The specification describes “ultraviolet light” as an example of the type of
`
`light that can be generated: “emitted light 136 (e.g., at least one or more
`
`wavelengths of ultraviolet light).” (’841 patent, 18:34-36 (Ex. 1101); see also id.
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`at 17:12-14 (discussing the ultraviolet light 136 generated by the plasma 132 of the
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`light source 100).)
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`39. Therefore, the term “light source” should be construed to mean “a
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`source of electromagnetic radiation in the extreme ultraviolet (10 nm to 100 nm),
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`vacuum ultraviolet (100 nm to 200 nm), ultraviolet (200 nm to 400 nm), visible
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`(400 to 700 nm), near-infrared (700 nm to 1,000 nm (1µm)), middle infrared (1 µm
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`to 10 µm), or far infrared (10 µm to 1,000 µm) regions of the spectrum.”
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`B.
`“Laser Driven Light Source”
`40. The term “laser driven light source” should be construed to mean a
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`“light source having a laser supplying energy to generate light.”
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`41. The term “laser driven light source” is not a term of art. As used in
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`the ’841 patent, a person of skill in the art would have understood the term “laser
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`driven light source” to refer to light sources where a laser supplies energy to
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`generate light. (E.g., ’841 patent, 14:45-50, 63-65 (“The light source 100 also
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`includes at least one laser source 104 that generates a laser beam that is provided to
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`the plasma 132 located in the chamber 128 to initiate and/or sustain the high
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
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`brightness light 136. . . . It is also desirable for the laser source 104 to drive and/or
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`sustain the plasma with a high power laser beam.”) (Ex. 1101).) Therefore, the
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`term “laser driven light source” should be construed to mean a “light source having
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`a laser supplying energy to generate light.”
`
`C.
`42.
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` “Light Bulb”
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` The term “light bulb” should be construed to mean “a light emitting
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`portion of a light source.” This construction is consistent with the use of the term
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`“bulb” in the specification (the term “light bulb” appears only in the claims) and
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`with the limitations in claim 10 that relate to the “light bulb.” (E.g., ’841 patent,
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`20:43-54, 26:52-64, 39:62-64, 49:22-25, 49:31-35 (Ex. 1101).) In the context of
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`the ’841 patent, a person of skill in the art would have understood the term “light
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`bulb” to mean “a light emitting portion of a light source.” Therefore, the term
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`“light bulb” should be construed to mean “a light emitting portion of a light
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`source.”
`
`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`43. Challenged claims 10, 13, and 14 of the ʼ841 patent recite and claim
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`features that were known in the art prior to the earliest priority date, and are
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`obvious in view of the prior art.
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`U.S. Patent 8,969,841
`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 ’841 Patent
`44. When the application that led to the ’841 patent was filed, there was
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`nothing new or inventive about a light source using an ignition source to generate a
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`plasma in a pressurized chamber and a laser operating at certain wavelengths to
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`sustain the plasma to produce high brightness light at certain wavelengths. This
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`concept had been known and widely used since at least as early as the 1980s, more
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`than two decades before the application date. For example, in 1983, Gärtner filed a
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`patent application entitled “Radiation source for optical devices, notably for
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`photolithographic reproduction systems,” which published on May 3, 1985 as
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`French Patent Application No. 2554302. (Gärtner, Ex. 1104). Gärtner describes a
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`light source for optical systems: “The present invention relates to a radiation
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`source for optical devices, in particular for photolithographic reproduction
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`systems.” (Gärtner at 1 (Ex. 1104).)
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`45. Gärtner is directed to the same application as that addressed by the
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`’841 patent, namely, producing light that is brighter than that produced by
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`conventional arc lamps for applications such as photolithography. (Compare
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`Gärtner at 1:2-4 (“It is preferably applied in cases where a radiated power is
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`required which is greater than that from pressurised mercury vapour lamps, such as
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`in photolithographic appliances for illuminating a photoresist layer on a
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`19
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`semiconductor wafer.”) (Ex. 1104) with ’841 patent, 1:42-63 (“The state of the art
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
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`in, for example, wafer inspection systems involves the use of xenon or mercury arc
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`lamps to produce light. . . . [T]hese arc lamps do not provide sufficient brightness
`
`for some applications, especially in the ultraviolet spectrum. . . . Accordingly, a
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`need therefore exists for improved high brightness light sources.”) (Ex. 1101).)
`
`46. Gärtner proposes the same basic solution as the ’841 patent, albeit
`
`more than twenty years earlier: (1) a sealed chamber, (2) an ignition source, and
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`(3) a laser that provides energy that sustains a plasma providing high-brightness
`
`light. (Compare Gärtner at 4:31-35, 5:1-9, Fig. 1 (Ex. 1104) with ’841 patent, 2:8-
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`15, Fig. 1 (Ex. 1101).) For example, as shown below, Figure 1 of Gärtner depicts a
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`“gas-tight chamber 1” (green); “laser 10” (blue) as an ignition source for
`
`generating the plasma 14; and a “laser 9” (red) for sustaining the plasma (yellow)
`
`and producing a high brightness light. (Gärtner at 4-5, Fig. 1 (Ex. 1104).)
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
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`’841 patent, Fig. 1 (Ex. 1101)
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`
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`
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`Gärtner, Fig. 1 (Ex. 1104)
`
`B.
`
`Sustaining a plasma with a laser at various wavelengths, including
`those up to about 2000 nm, was well known in the art
`47. Gärtner’s laser 9 is a CO2 laser. (Gärtner at 5:3-5 (Ex. 1104).) CO2
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`lasers, which generally operate at a wavelength of 10.6 µm, were commonly used
`
`during the 1970s and 1980s because they provided high power and were cost-
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`effective at the time. (See, e.g., U.S. Patent No. 4,780,608 to Cross at 5:44-47
`
`(“Carbon dioxide lasers have been used since the output therefrom is readily
`
`absorbed by plasmas and they are available with very high power in both pulsed
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`and cw operating modes.”) (Ex. 1115).) It was recognized at the time of Gärtner
`
`that shorter wavelength lasers could also be used. (See, e.g., id. at 5:40-52
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`(“[L]asers other than carbon dioxide may be used for the initiation and the
`
`sustaining of the continuous optical discharge plasma. For example, a Nd:YAG
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`laser has been used for the initiation step. . . . Moreover, laser heating of plasma
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`U.S. Patent 8,969,841
`Declaration of J. Gary Eden, Ph.D.
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`via the inverse Bremsstrahlung process varies as λ2, so that cw-laser sources
`
`having shorter wavelengths such as Nd:YAG, for example, are absorbed less
`
`effectively, and would require substantially greater cw-laser output power levels to
`
`sustain the plasma.”) (Ex. 1115).)
`
`48. During the 1990s and early 2000s, laser technology for shorter
`
`wavelengths (i.e., those up to about 2000 nm (the infrared spectral region))
`
`improved significantly because of the development of titanium-doped sapphire and