DOCKET NO.: 0107945.00246US25
`Filed By: Donald R. Steinberg, Reg. No. 37,241
`David L. Cavanaugh, Reg. No. 36,476
`Michael H. Smith, Reg. No. 71,190
`60 State Street
`Boston, Massachusetts 02109
`Tel: (617) 526-6000
`Email: Don.Steinberg@wilmerhale.com
`
` David.Cavanaugh@wilmerhale.com
`
` MichaelH.Smith@wilmerhale.com
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`
`ASML Netherlands B.V., ASML US Inc., Excelitas Technologies Corp., and
`Qioptiq Photonics GmbH & Co. KG,
`Petitioners
`
`v.
`
`Energetiq Technology, Inc.,
`Patent Owner.
`
`Case IPR2016-00689
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,969,841
`CLAIMS 11, 12, and 27-29
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`U.S. Patent 8,969,841
`Petition for Inter Partes Review
`
`
`Page
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`I. 
`
`MANDATORY NOTICES ............................................................................. 1 
`A. 
`Real Parties-in-Interest .......................................................................... 1 
`B. 
`Related Matters ...................................................................................... 1 
`C. 
`Counsel .................................................................................................. 2 
`D. 
`Service Information ............................................................................... 2 
`CERTIFICATION OF GROUNDS FOR STANDING .................................. 3 
`II. 
`III.  OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 3 
`A.  Grounds for Challenge .......................................................................... 3 
`B. 
`Prior Art Patents and Printed Publications Relied Upon ...................... 3 
`C. 
`Relief Requested .................................................................................... 4 
`IV.  PERSON OF ORDINARY SKILL IN THE ART .......................................... 4 
`V.  OVERVIEW OF THE ’841 PATENT ............................................................ 6 
`A. 
`Summary of the Prosecution History .................................................... 7 
`VI.  CLAIM CONSTRUCTION .......................................................................... 10 
`A. 
`“Light source” ..................................................................................... 11 
`B. 
`“Laser Driven Light Source” ............................................................... 13 
`C. 
`“Light Bulb” ........................................................................................ 14 
`D. 
`“Substantially continuous laser” ......................................................... 15 
`VII.  THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 15 
`A. 
`Laser Sustained Plasma Light Sources Were Known Long
`Before the Priority Date of the ’841 Patent ......................................... 15 
`Sustaining a plasma with a laser at various wavelengths,
`including those up to about 2000 nm, was well known in the art ....... 16 
`VIII.  GROUNDS FOR FINDING THE CHALLENGED CLAIMS INVALID ... 24 
`A.  Ground 1: Claims 11, 12, and 27-29 Are Unpatentable Over
`Gärtner in View of Mourou and Silfvast ............................................. 25 
`1. 
`Independent Claim 10 .................................................................. 25 
`2.  Dependent Claims ........................................................................ 43 
`
`B. 
`
`i
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`

`
`U.S. Patent 8,969,841
`Petition for Inter Partes Review
`
`
`B. 
`
`Ground 2: Claims 11, 12, and 27-29 Are Unpatentable Over
`Gärtner in View of Kensuke and Silfvast ........................................... 47 
`1. 
`Independent Claim 10 .................................................................. 48 
`2.  Dependent Claims ........................................................................ 57 
`IX.  RESPONSE TO ARGUMENTS RAISED BY PATENT OWNER
`REGARDING OBJECTIVE INDICIA OF NON-OBVIOUSNESS ............ 59 
`CONCLUSION .............................................................................................. 60 
`
`X. 
`
`
`ii
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`

`
`U.S. Patent 8,969,841
`Petition for Inter Partes Review
`
`I. MANDATORY NOTICES
`A. Real Parties-in-Interest
`ASML Netherlands B.V., ASML US Inc., Excelitas Technologies Corp., and
`
`Qioptiq Photonics GmbH & Co. KG (“Petitioners”) are the real parties-in-interest.
`
`B. Related Matters
`U.S. Patent No. 8,969,841 (“the ’841 patent,” Ex. 1301) is one member of a
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`patent family of continuation and continuation in part applications. Exhibit 1302
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`shows the U.S. members of this patent family and the relationships among them.
`
`Petitioners have already filed two petitions seeking inter partes review of claims 1-
`
`3, 7, 10, 13, and 14 of the ’841 patent. On November 30, 2015, the Board
`
`instituted an inter partes review on claims 1-3 and 7; the other petition remains
`
`pending. (See Case No. IPR2015-01362 (PTAB Nov. 30, 2015)(Paper 12); Case
`
`No. IPR2016-00127 (pending)). Petitioners are also seeking inter partes review
`
`of related U.S. Patent Nos. 7,435,982 (“the ’982 patent”); 7,786,455 (“the ’455
`
`patent”); 8,309,943 (“the ’943 patent”); 8,525,138 (“the ’138 patent”); 9,048,000
`
`(“the ’000 patent”); and U.S. Patent No. 9,185,786 (“the ’786 patent”) in Case
`
`Nos. IPR2015-01300, IPR2015-01303, IPR2015-01377, IPR2016-00583,
`
`IPR2016-00584, IPR2016-00585, IPR2015-01279, IPR2016-00570, IPR2016-
`
`00575, IPR2015-00576, IPR2016-00578, IPR2016-00579, IPR2015-01277,
`
`IPR2016-00554, IPR2016-00556, IPR2016-00555, IPR2015-01368, IPR2016-
`
`1
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`

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`U.S. Patent 8,969,841
`Petition for Inter Partes Review
`00565, IPR2016-00566, IPR2015-01362, IPR2016-00127, IPR2015-01375,
`
`IPR2016-00126, IPR2016-00771, and IPR2016-00776. The status of the other
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`proceedings is summarized in Ex. 1313.
`
`Petitioners may also file additional petitions on the ’841, ’000, and ’786
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`patents. Petitioners request that the inter partes reviews of all these patents be
`
`assigned to the same Panel for administrative efficiency.
`
`The following litigation matters would affect or be affected by a decision in
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`this proceeding: Energetiq Tech., Inc. v. ASML Netherlands B.V., No. 1:15-cv-
`
`10240-LTS (D. Mass.) and In the Matter of Certain Laser-Driven Light Sources,
`
`Subsystems Containing Laser-Driven Light Sources, and Products Containing
`
`Same, Inv. 337-TA-983 (U.S. International Trade Commission).
`
`C. Counsel
`Lead Counsel: Donald R. Steinberg (Registration No. 37,241)
`
`Backup Counsel: David L. Cavanaugh (Registration No. 36,476)
`
`Second Backup Counsel: Michael H. Smith (Registration No. 71,190)
`
`Service Information
`
`D.
`Email: Donald R. Steinberg, don.steinberg@wilmerhale.com
`
`Post and Hand Delivery: WilmerHale, 60 State St., Boston MA 02109
`
`Telephone: 617-526-6453
`
`
`
`Facsimile: 617-526-5000
`
`Petitioners consent to service by email.
`
`2
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`

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`U.S. Patent 8,969,841
`Petition for Inter Partes Review
`II. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioners certify pursuant to Rule 42.104(a) that the patent for which
`
`review is sought is available for inter partes review and that Petitioners are not
`
`barred or estopped from requesting an inter partes review challenging the patent
`
`claims on the grounds identified in this Petition.
`
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Pursuant to Rules 42.22(a)(1) and 42.104 (b)(1)-(2), Petitioners challenge
`
`claims 11, 12, and 27-29 of the ’841 patent (“the challenged claims”) and request
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`that each challenged claim be cancelled.
`
`A. Grounds for Challenge
` This Petition, supported by the declaration of Dr. J. Gary Eden, a Professor
`
`of Electrical Engineering at the University of Illinois (“Eden Decl.,” Ex. 1303),
`
`demonstrates that there is a reasonable likelihood that Petitioners will prevail with
`
`respect to at least one of the challenged claims and that each of the challenged
`
`claims is unpatentable for the reasons cited in this petition. 35 U.S.C. § 314(a).
`
`Prior Art Patents and Printed Publications Relied Upon
`
`B.
`Petitioners rely upon the following patents and printed publications:
`
`1. French Patent Publication No. FR2554302A1, published May 3, 1985
`
`(“Gärtner,” Ex. 1304), with English Translation, and is prior art to the ʼ841
`
`patent under 35 U.S.C. § 102(b).
`
`2. Int’l Publication WO-2004097520, published November 11, 2004 (“Mourou,”
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`3
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`

`
`U.S. Patent 8,969,841
`Petition for Inter Partes Review
`Ex. 1314); prior art to the ʼ841 patent under 35 U.S.C. § 102(b).
`
`3. Japanese Patent Publication No. 2006010675A, published January 12, 2006
`
`(“Kensuke,” Ex. 1305), with English Translation, and is prior art to the ʼ841
`
`patent under 35 U.S.C. §§ 102(a) and 102(b).
`
`4. William T. Silfvast, Laser Fundamentals, 2d ed., published in 2004 (“Silfvast,”
`
`Ex. 1306); prior art to the ʼ841 patent under 35 U.S.C. § 102(b).
`
`C. Relief Requested
`Petitioners request that the Patent Trial and Appeal Board cancel the
`
`challenged claims because they are unpatentable under 35 U.S.C. § 103.
`
`IV. PERSON OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art (“POSITA”) 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 plasmas. (Eden
`
`Decl. ¶ 25 (Ex. 1303).)
`
`The ’841 patent states that the alleged “invention relates to methods and
`
`apparatus for providing a laser-driven light source.” (’841 patent, 1:26-27 (Ex.
`
`1301).) Since a laser is fundamental to maintaining the plasma in all laser-driven
`
`light sources (including the light source in the ’841 patent), it is reasonable to
`
`4
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`

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`U.S. Patent 8,969,841
`Petition for Inter Partes Review
`expect that a person skilled in the art would have experience with, and an
`
`understanding of, both plasmas and lasers. (Eden Decl. ¶ 26 (Ex. 1303).)
`
`In accord with the definition of the skilled artisan suggested above, Dr.
`
`Eden’s graduate students in 2005 (as well as before that time and since) normally
`
`took graduate level courses in both lasers and plasma physics, and routinely
`
`worked with (and were instructed in the laboratory about the properties of)
`
`plasmas, many of which were produced with lasers. Lasers sufficiently powerful
`
`to generate and/or sustain a plasma are a potential safety hazard and must be
`
`approached with skill. Fundamental safety concerns require those in the field of
`
`systems incorporating plasmas and lasers to understand both from a fundamental
`
`perspective and to acquire experience in working with both. Furthermore, because
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`the properties of individual lasers determine if they are suitable for driving an
`
`efficient plasma light source, one skilled in the art must have an understanding of
`
`the state of the art in laser physics and technology, as well as the parameters and
`
`characteristics of the most efficient and powerful systems. By the time Dr. Eden’s
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`graduate students obtained their Ph.D. degrees, therefore, they would have had at
`
`least 4-5 years of experience with both plasmas and lasers. Thus, the problem and
`
`solution to which the ’841 patent is directed, and the experience of those who
`
`typically would work on developing laser-generated plasmas, demonstrate that a
`
`person of ordinary skill would have experience with both lasers and plasmas.
`
`5
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`

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`U.S. Patent 8,969,841
`Petition for Inter Partes Review
`
`(Eden Decl. ¶ 27 (Ex. 1303).)
`
`V. OVERVIEW OF THE ’841 PATENT
`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, the light source includes a sealed pressurized chamber
`
`containing gas, an ignition source for ionizing the gas, a laser providing energy to
`
`the plasma, plasma-generated light, and the chamber having a transparent region to
`
`allow the plasma-generated light to exit. (’841 patent, claim 10 (Ex. 1301).)
`
`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. 1301).) Thus, an alleged need arose for a way to sustain
`
`plasma without relying on an electrical discharge from electrodes. (’841 patent,
`
`1:59-63 (Ex. 1301).) The alleged invention of the patent family involves using a
`
`laser 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 about 2000 nm. ’841
`
`patent, claim 10 (Ex. 1301).) (Ex. 1301).) (Eden Decl. ¶ 28 (Ex. 1303).)
`
`As discussed below, there was nothing new in 2006 about sustaining a
`
`plasma with a laser to produce light. Multiple prior art references, including
`
`Gärtner, Mourou, and Kensuke, disclosed laser-sustained plasma light sources.
`
`Moreover, there was nothing new about providing energy to a plasma with a laser
`
`6
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`

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`U.S. Patent 8,969,841
`Petition for Inter Partes Review
`operating at a wavelength of up to 2000 nm. As the patent admits, efficient, cost
`
`effective, and high power lasers in the claimed wavelength range were “recently
`
`available.” (’841 patent, 16:6-14 (emphasis added) (Ex. 1301).) 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, while Gärtner provides an
`
`example of a system that maintains a plasma. Silfvast shows that the laser used by
`
`Mourou and Kensuke could be operated as a continuous wave laser. It would have
`
`been obvious to combine Mourou and Silfvast or Kensuke and Silfvast with
`
`Gärtner to arrive at the claimed invention. (Eden Decl. ¶ 30 (Ex. 1303).)
`
`A.
`
`Summary of the Prosecution History
`
`The ’841 patent (Ex. 1301) issued from U.S. Patent Appl. No. 14/510,959,
`
`filed on October 9, 2014. The ’841 patent is a continuation of the ’000 patent,
`
`which is a continuation of the ’138 patent, which is a continuation in part of U.S.
`
`Patent Appl. No. 12/166,918 (now U.S.7,989,786), 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 Ex. 1302.) As explained below, the Examiner allowed the claims
`
`of the ʼ841 patent only after the applicant amended the claims to include a
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`limitation regarding the laser wavelength.
`
`On November 12, 2014, the Examiner rejected the claims in light of various
`
`prior art references. (Office Action dated Nov. 12, 2014 (Ex. 1308).) The claims
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`7
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`U.S. Patent 8,969,841
`Petition for Inter Partes Review
`were primarily rejected based on Cross and Kane. The Office Action asserted that
`
`“Cross discloses a light source comprising a pressurized chamber in which a laser
`
`sustained plasma emits [] light,” and that Kane discloses an ultraviolet light source
`
`comprising a pressurized chamber and an electrode ignition source. (Id. at 2-4.)
`
`On December 17, 2014, the applicant amended 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
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`region. (Applicant’s Amendment and Response dated Dec. 17, 2014 at 3 (Ex.
`
`1309).) The applicant argued that the amended claims 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.)
`
`On January 22, 2015, the newly amended claims were allowed. (Notice of
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`Allowability dated Jan. 22, 2015 at 2 (Ex. 1310).) With respect to application
`
`claims 1, 15, and 20, the Examiner introduced U.S. Publ. 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 electro-
`
`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 [UV]
`
`light (80-350 nm, more typically 11-320 nm).” (U.S. Patent No. 6,541,924
`
`(“Kane”) at 7:53-59 (Ex. 1318).) (Eden Decl. ¶ 33 n. 1 (Ex. 1303).)
`
`8
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`

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`U.S. Patent 8,969,841
`Petition for Inter Partes Review
`magnetic radiation with a wavelength greater than 50 nm. (Id.) Regarding Cross,
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`the Examiner stated that in addition to not disclosing a laser with a wavelength
`
`from 700 to 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.) The Examiner, however, did not consider
`
`Gärtner or Mourou or Silfvast, nor was the Examiner provided a complete English
`
`translation of Kensuke.2 As discussed below, (i) Gärtner in view of Mourou and
`
`Silfvast and (ii) Gärtner in view of Kensuke and Silfvast each renders the
`
`challenged claims unpatentable as obvious.
`
`The independent claim features identified in the Notice of Allowability as
`
`missing from the prior art are present in the prior art used in the proposed grounds
`
`2 Kensuke was included in an Information Disclosure Statement filed 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 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 section VIII.B.1.d).)
`
`9
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`U.S. Patent 8,969,841
`Petition for Inter Partes Review
`of unpatentability, as the Board recognized in its Decision on Institution in an IPR
`
`directed to the same patent. (Case No. IPR2015-01362 at 13-14 (PTAB Nov. 30,
`
`2015) (Paper 12) (instituting on claims including independent claim 1).)
`
`VI. CLAIM CONSTRUCTION
`A claim in inter partes review is given the “broadest reasonable construction
`
`in light of the specification of the patent in which it appears.” 37 C.F.R. §
`
`42.100(b). Claim terms are given their ordinary and customary meaning as would
`
`be understood by a POSITA at the time of the invention and in the context of the
`
`patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). If the specification sets forth an alternate definition of a term with
`
`“reasonable clarity, deliberateness, and precision[,]” the patentee’s lexicography
`
`governs. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`Should the Patent Owner, seeking to avoid the prior art, contend that the
`
`claims have a construction different from their broadest reasonable construction,
`
`the appropriate course is for the Patent Owner to seek to amend the claims to
`
`expressly correspond to its contentions in this proceeding. See 77 Fed. Reg. at
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`48,766-67.
`
`Consistent with this standard, this section proposes, under the broadest
`
`reasonable construction standard, constructions of terms and provides support for
`
`these proposed constructions. Terms not included in this section have their
`
`10
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`U.S. Patent 8,969,841
`Petition for Inter Partes Review
`broadest reasonable meaning in light of the specification as commonly understood
`
`by those of ordinary skill.
`
`Applying the claim construction standard of Phillips v. AWH Corp., 415
`
`F.3d 1303 (Fed. Cir. 2005) would not change the analysis or conclusions covered
`
`in this petition. The prior art teaches each claim limitation under any reasonable
`
`interpretation of the claim terms, and the analysis is not dependent on application
`
`of the “broadest reasonable interpretation” standard.
`
`“Light source”
`
`A.
` The term “light source” is recited in all challenged claims. “Light source”
`
`should be construed to mean “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.” (Eden Decl. ¶ 38 (Ex. 1303).)
`
`The ordinary and customary meaning of “light source”3 is a source of
`
`electromagnetic radiation in the extreme UV [EUV] (10 nm to 100 nm), vacuum
`
`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. 1301).) (See Eden Decl. ¶ 39 n.3 (Ex. 1303).)
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`11
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`U.S. Patent 8,969,841
`Petition for Inter Partes Review
`UV (100 nm to 200 nm), UV (200 nm to 400 nm), visible (400 to 700 nm), near-
`
`infrared (700 nm to 1,000 nm (1µm)), middle infrared (1 µm to 10 µm), or far
`
`infrared (10 µm to 1,000 µm) regions of the spectrum. (See, e.g., Silfvast, at 4 (Ex.
`
`1306).) The Patent Owner publishes a data sheet which is consistent with the
`
`ordinary and customary meaning in considering EUV to be within the meaning of
`
`“light source.” (See, e.g., Energetiq EQ-10M Data Sheet at 2 (describing
`
`Energetiq’s EQ-10M product operating at 13.5 nm as an “EUV Light Source”)
`
`(Ex. 1307).) (Eden Decl. ¶ 39 (Ex. 1303).)
`
`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. The
`
`’841 patent states that parameters such as the wavelength of the light from a light
`
`source “vary depending upon the application.” (’841 patent, 1:39-41 (Ex. 1301).)
`
`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. 1301); see also id. at 17:12-14
`
`(discussing the ultraviolet light 136 generated by the plasma 132 of the light source
`
`100).) (Eden Decl. ¶ 40 (Ex. 1303).)
`
`Therefore, the term “light source” should be construed to mean “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,
`
`12
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`U.S. Patent 8,969,841
`Petition for Inter Partes Review
`having wavelengths within the range of 10 nm to 1,000 μm.”4 (Eden Decl. ¶ 41
`
`(Ex. 1303).)
`
`“Laser Driven Light Source”
`
`B.
`The term “laser driven light source” is recited in all challenged claims. The
`
`term “laser driven light source” should be construed to mean a “light source having
`
`a laser applying energy to generate light.” (Eden Decl. ¶ 42 (Ex. 1303).)
`
`The term “laser driven light source” is not a term of art. As used in the ’841
`
`patent, a POSITA would have understood the term “laser driven light source” to
`
`refer to light sources in which a laser supplies energy to generate light. (See e.g.,
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`’841 patent, 14:45-50, 63-65 (“The light source 100 also includes at least one laser
`
`source 104 that generates a laser beam that is provided to the plasma 132 located in
`
`the chamber 128 to initiate and/or sustain the high brightness light 136. . . . It is
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`also desirable for the laser source 104 to drive and/or sustain the plasma with a
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`high power laser beam.”) (Ex. 1301).) Therefore, the term “laser driven light
`
`source” should be construed to mean a “light source having a laser applying energy
`
`4 The particular construction for “light source” was adopted by the Board in the
`
`Decision granting Institution of Inter Partes Review for claims 1-3 and 7. (See
`
`Case No. IPR2015-01362 (PTAB Nov. 30, 2015) (Paper 12).) This construction is
`
`equivalent to the Petitioners’ prior proposed construction for “light source” in the
`
`prior Petitions for the ’841 patent and other patents in the patent family.
`
`13
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`U.S. Patent 8,969,841
`Petition for Inter Partes Review
`
`to generate light.” (Eden Decl. ¶ 43 (Ex. 1303).)5
`
`“Light Bulb”
`
`C.
`The term “light bulb” should be construed to mean “a light emitting portion
`
`of a light source.” This construction is consistent with the use of the term “bulb”
`
`in the specification (the term “light bulb” appears only in the claims) and with the
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`limitations in independent claim 10, on which the challenged claims depend, that
`
`relate to the “light bulb.” (E.g., ’841 patent, 20:43-54 (the light source includes a
`
`sealed chamber, such as a sealed bulb, containing an ionizable medium that is
`
`energized to create a plasma that emits light), 26:52-64 (similar), 49:22-25 (light
`
`bulb defines a sealed pressurized chamber containing a gas), 49:31-35 (chamber
`
`includes a region allowing the plasma-generated light to exit the bulb) (Ex. 1301).)
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`In the context of the ’841 patent, a POSITA 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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`5 The particular construction for the claim term “laser driven light source” was
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`adopted by the Board in the Decision granting Institution of Inter Partes Review
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`for claims 1-3 and 7. (See Case No. IPR2015-01362 (PTAB Nov. 30, 2015) (Paper
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`12).) This construction is equivalent to the Petitioners’ prior proposed construction
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`for the term “laser driven light source” in the prior Petitions for the ’841 patent and
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`other patents in the patent family.
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`Petition for Inter Partes Review
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`source.” (Eden Decl. ¶ 44 (Ex. 1303).)
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`“Substantially continuous laser”
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`D.
`The term “substantially continuous laser” is recited in independent claim 10,
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`from which the challenged claims depend. The term “substantially continuous
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`laser” should be construed to encompass a continuous wave laser, a high pulse rate
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`laser, and a laser that provides substantially continuous laser energy, as the Board
`
`construed the term in its Decision granting Institution of Inter Partes Review for
`
`claims 1-3 and 7. (See Case No. IPR2015-01362 (PTAB Nov. 30, 2015) (Paper
`
`12).) The specification of the ’841 patent indicates that a substantially continuous
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`laser can be a continuous wave laser, a high pulse rate laser, or a laser that provides
`
`substantially continuous laser energy. (’841 patent, 15:60-62 (high pulse rate laser
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`or continuous wave laser); 16:15-18 (“high pulse rate laser source that provides
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`substantially continuous laser energy”); 4:53-55 (a “continuous-wave laser emits
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`radiation continuously or substantially continuously rather than in short bursts, as
`
`in a pulsed laser”) (Ex. 1301).) (Eden Decl. ¶¶ 45-46 (Ex. 1303).)
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`VII. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`The challenged claims recite and claim features that were known in the art
`
`prior to the earliest priority date, and are obvious in view of the prior art.
`
`A. Laser Sustained Plasma Light Sources Were Known Long Before
`the Priority Date of the ’841 Patent
`
`When the application that led to the ’841 patent was filed, there was nothing
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`U.S. Patent 8,969,841
`Petition for Inter Partes Review
`new or inventive about a light source using an ignition source to generate a plasma
`
`in a pressurized chamber and a laser operating at certain wavelengths to sustain the
`
`plasma to produce light at certain wavelengths. This concept had been known and
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`widely used since at least as early as the 1980s, more than two decades before the
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`application date. For example, in 1983 Gärtner filed a patent application, which
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`published in 1985. As shown in Fig. 1, reproduced below adjacent to Fig. 1 of the
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`’841 patent, Gärtner discloses a light source with the same features claimed in the
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`’841 patent: (1) a sealed chamber 1 (green); (2) transparent region of a chamber so
`
`that the light can exit the chamber – window 8; (3) an ignition source - pulsed laser
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`10 (blue), which generates a plasma 14 (yellow); and (4) a laser to produce light -
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`laser 9 (red), which provides energy to the plasma 14 (yellow) and produces light
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`15 having a wavelength greater than 50 nm. (Gärtner at 4:32-5:9, 5:26-30, 6:10-
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`12, Fig. 1 (Ex. 1304).) (Eden Decl. ¶ 48 (Ex. 1303).)
`
`’841 patent, Fig. 1 (Ex. 1301)
`
`
`
`
`
`
`
`Gärtner, Fig. 1 (Ex. 1304)
`
`B.
`
`Sustaining a plasma with a laser at various wavelengths, including
`
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`U.S. Patent 8,969,841
`Petition for Inter Partes Review
`those up to about 2000 nm, was well known in the art
`Gärtner’s laser 9 is a CO2 laser. (Gärtner at 5:3-5 (Ex. 1304).) CO2 lasers,
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`which generally operate at a wavelength of 10.6 µm, were commonly used during
`
`the ‘70s and ‘80s because they provided high power and were cost-effective at the
`
`time. (See, e.g., 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 and cw operating modes.”) (Ex. 1315).) However, it
`
`was recognized around the time of Gärtner that shorter wavelength lasers could
`
`also be used. (Id. at 5:40-53 (“[L]asers other than carbon dioxide may be used for
`
`the initiation and the sustaining of the continuous optical discharge plasma. For
`
`example, a Nd:YAG laser has been used for the initiation step. []Moreover, laser
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`heating of plasma 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. 1315).) By the mid-2000s, laser
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`technology for shorter wavelengths (e.g., those in the range of 700-2000 nm) had
`
`improved significantly because of the development of titanium-doped sapphire
`
`(Ti:sapphire) and rare earth-doped glass fiber lasers (in particular), making it easier
`
`and more desirable to sustain plasmas with lasers in this wavelength range.6 For
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`6 Patent Owner alleges that suitable commercial short wavelength lasers were
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`Petition for Inter Partes Review
`example, “Since the mid-1990s, high power Yb-doped fiber lasers have progressed
`
`rapidly from 2 W in 1995, to 20 W and 35 W in 1997, and 110 W in 1999, the
`
`published record at the time of this writing.” (Digonnet, at 148 (references
`
`omitted) (Ex. 1322).) The ytterbium (Yb)-doped glass fiber laser typically
`
`operates at a wavelength of approximately 1030 nm. By 2004, titanium-doped
`
`lasers were available that also produced at least 50 watts of power over a broad
`
`range of wavelengths in the near-infrared and middle infrared regions (660-1180
`
`nm). (Silfvast, 567 (Ex. 1306).) In 2004, it was also shown that 1,000 W (1 kW)
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`could be obtained from a ytterbium-doped fiber laser. (Jeong, 1 (disclosing a
`
`available for more than 20 years before the invention. (Case No. IPR2015-01362 at
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`3, 37, 50-52 (PTAB Mar. 1, 2016) (Paper 24).) However, the lasers that Patent
`
`Owner cites as examples (as well as other industrial, high-power, solid-state lasers,
`
`available prior to the late 1990s), were generally inefficient, costly, heavy, bulky,
`
`and exhibited poor beam quality, rendering them unsuitable for commercial laser-
`
`driven light sources. Indeed, Zimakov (cited by Patent Owner in IPR2015-01375,
`
`directed to the’841 patent), acknowledges that “plasma-based light source[s]” that
`
`are “used in micro-electronics …became possible due to the appearance of high-
`
`efficiency near-IR lasers, in particular diode lasers and ytterbium fiber lasers.”
`
`(Zimakov, 68 (citing papers from 2006 and later) (Ex. 1328).) (Eden Decl. ¶ 50
`
`n.6 (Ex. 1303).)
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`“[y]tterbium-doped large-core fibre laser with 1 kW of [cw] output power”) (Ex.
`
`1228)