UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`IRADION LASER, INC.
`Petitioner,
`
`v.
`
`NOVANTA CORPORATION
`Patent Owner.
`____________
`
`Case IPR2017-00244
`Patent 6,198,759
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION PURSUANT TO 37 C.F.R. § 42.107
`
`
`
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`

`

`Case IPR2017-00244
`Patent 6,198,759
`
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`III.
`
`INTRODUCTION ........................................................................................... 1
`IPR SHOULD BE DENIED BECAUSE PETITION IS NOT TIMELY ....... 2
`A.
`Petitioner Must File Petition within 1 year of Service of a Complaint
`Alleging Infringement ........................................................................... 2
`Background Facts and Related Litigation ............................................. 4
`B.
`The IPR Petition is Not Timely ............................................................. 6
`C.
`IPR SHOULD BE DENIED BECAUSE PETITIONER FAILS TO
`PROVIDE MEANINGFUL EVIDENCE THAT SUPPORTS
`ITS
`ALLEGATIONS .............................................................................................. 8
`A. No Expert Declaration ........................................................................... 8
`B.
`No Level of Ordinary Skill in the Art ................................................... 8
`IV. RESPONSE TO SUBSTANTIVE GROUNDS ............................................11
`A.
`The Technology of the’759 Patent ......................................................11
`1.
`Introduction to Lasers ...............................................................11
`2.
`State of the Art of Waveguide Lasers in 1999 ..........................16
`3.
`Overview of the ’759 Patent .....................................................16
`Level of Ordinary Skill in the Art .......................................................20
`B.
`Claim Construction..............................................................................21
`C.
`D. Alleged Prior Art .................................................................................23
`4.
`Opower ......................................................................................23
`5.
`Vitruk ........................................................................................25
`GROUND 1: Claims 11, 14, 24, 26, and 28 are Not Anticipated by
`Opower ................................................................................................25
`
`E.
`
`
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`Case IPR2017-00244
`Patent 6,198,759
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`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Claims 11 and 14 – Opower lacks “the lasing media sections
`being shaped to have continuous variations in thickness along
`the longitudinal axis….” ...........................................................25
`Claim 11 and 14 – Opower lacks “the first inner surface and the
`second inner surface being shaped along the longitudinal axis to
`have continuous variation in the inter-electrode gap.” .............29
`Claim 14 – Opower lacks “the thickness of one of the lasing
`media sections at a first longitudinal position along the
`longitudinal axis is at least 10% different than the thickness of
`one of the other lasing media sections at a second longitudinal
`position along the longitudinal axis.” .......................................30
`Claims 24, 26, and 28 – Opower lacks “varying the thickness of
`the lasing media sections to have continuous variations for
`portions of one or more sections of the set of lasing media
`sections along their respective longitudinal axes.” ...................31
`Claim 26 – Opower lacks “forming the lasing media sections to
`be symmetric with respect to one or more of the longitudinal
`axes.” .........................................................................................31
`Claim 28 – Opower lacks “forming one of the lasing media
`sections so that its thickness at a first longitudinal position is at
`least 15% different than one of the lasing media sections at a
`second longitudinal position.” ..................................................33
`GROUND 2: Claims 11, 14, 24, 26, and 28 are Not Anticipated by
`Vitruk ...................................................................................................33
`1.
`Claims 11 and 14 – Vitruk lacks “the lasing media sections
`being shaped to have continuous variations in thickness along
`the longitudinal axis….” ...........................................................33
`Claim 11 and 14 – Vitruk lacks “the first inner surface and the
`second inner surface being shaped along the longitudinal axis to
`have continuous variation in the inter-electrode gap.” .............36
`Claim 14 – Vitruk lacks “the thickness of one of the lasing
`media sections at a first longitudinal position along the
`
`3.
`
`F.
`
`2.
`
`ii
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`Case IPR2017-00244
`Patent 6,198,759
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`
`5.
`
`6.
`
`4.
`
`longitudinal axis is at least 10% different than the thickness of
`one of the other lasing media sections at a second longitudinal
`position along the longitudinal axis.” .......................................36
`Claims 24, 26, and 28 – Vitruk lacks “varying the thickness of
`the lasing media sections to have continuous variations for
`portions of one or more sections of the set of lasing media
`sections along their respective longitudinal axes.” ...................37
`Claim 26 – Vitruk lacks “forming the lasing media sections to
`be symmetric with respect to one or more of the longitudinal
`axes.” .........................................................................................37
`Claim 28 – Vitruk lacks “forming one of the lasing media
`sections so that its thickness at a first longitudinal position is at
`least 15% different than one of the lasing media sections at a
`second longitudinal position.” ..................................................38
`G. GROUND 3: Claims 11, 14, 24, 26, and 28 are Not Obvious over
`Opower and/or Vitruk .........................................................................38
`1.
`No Motivation to Combine .......................................................38
`2.
`Claims 11 and 14 – Opower and/or Vitruk do not teach or
`render obvious “the lasing media sections being shaped to have
`continuous variations in thickness along the longitudinal
`axis….” .....................................................................................41
`Claim 11 and 14 – Opower and/or Vitruk do not teach or render
`obvious “the first inner surface and the second inner surface
`being shaped along the longitudinal axis to have continuous
`variation in the inter-electrode gap.” ........................................42
`Claim 14 – Opower and/or Vitruk do not teach or render
`obvious “the thickness of one of the lasing media sections at a
`first longitudinal position along the longitudinal axis is at least
`10% different than the thickness of one of the other lasing
`media sections at a second longitudinal position along the
`longitudinal axis.” .....................................................................44
`
`3.
`
`4.
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`Case IPR2017-00244
`Patent 6,198,759
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`
`5.
`
`Claims 24, 26, and 28 – Opower and/or Vitruk do not teach or
`render obvious “varying the thickness of the lasing media
`sections to have continuous variations for portions of one or
`more sections of the set of lasing media sections along their
`respective longitudinal axes.” ...................................................45
`Claim 26 – Opower and/or Vitruk do not teach or render
`obvious “forming the lasing media sections to be symmetric
`with respect to one or more of the longitudinal axes.” .............46
`Claim 28 – Opower and/or Vitruk do not teach or render
`obvious “forming one of the lasing media sections so that its
`thickness at a first longitudinal position is at least 15% different
`than one of the lasing media sections at a second longitudinal
`position.” ...................................................................................47
`CONCLUSION ..............................................................................................48
`
`6.
`
`7.
`
`V.
`
`
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`Case IPR2017-00244
`Patent 6,198,759
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`
`TABLE OF AUTHORITIES
`
`Cases
`Becton, Dickinson and Company v. Tyco Healthcare Group, LP, 616 F.3d 1249
`
`(Fed. Cir. 2010) ..............................................................................................39
`
`Ethicon, Inc. v. Quigg, 849 F.2d 1422 (Fed. Cir. 1988) ............................................ 2
`
`Ex Parte Georg Biehler, Hagen Bohme, Stefan Dausend, & Siegfried Prieler,
`
`APPEAL 2014-003248, 2016 WL 199262 (PTAB Jan. 14, 2016) ...............39
`
`Graham v. John Deere Co., 383 U.S. 1, (1966) ........................................................ 8
`
`Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol Ltd.,
`
`IPR2014-00309, Paper 83 (PTAB Mar. 23, 2014) .......................................... 9
`
`Oracle Corp. v. Thought, Inc., IPR2014-00119, Paper 45 (Apr. 23, 2015) .............. 9
`
`Oracle v. Click-to Call, IPR2013-00312, Paper 40 ................................................... 7
`
`St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., Paper No. 29,
`
`IPR2013-00258(PTAB Oct. 16, 2013) ............................................................ 3
`
`Universal Remote Control, Inc. v. Universal Electronics, Inc., IPR2013-00168,
`
`Paper 9 (PTAB 2103) ...................................................................................... 4
`
`Universal Remote Control, Inc. v. Universal Electronics, Inc., Paper No. 9 at 5,
`
`IPR2013-00168 (PTAB 2013) ......................................................................... 2
`
`Statutes
`35 U.S.C. § 315(b) ..................................................................................................... 3
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`Case IPR2017-00244
`Patent 6,198,759
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`37 C.F.R. 42.104 ........................................................................................................ 8
`
`Other Authorities
`157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011) ........................................................ 2
`
`H.R. 1249 ................................................................................................................... 3
`
`Meeting of H. Comm. on the Judiciary, Transcript of Markup of H.R. 1249 (April
`
`14, 2011) .......................................................................................................... 2
`
`
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`Case IPR2017-00244
`Patent 6,198,759
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`
`EXHIBIT LIST
`
`Exhibit #
`1001
`
`Description
`U.S. Patent No. 6,198,759 to Broderick et al. (“the ’759 patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`U.S. Patent No. 6,614,826 to Bethel et al. (“the ’826 patent”)
`
`File Wrapper of the ’759 Patent (U.S. Patent Application No.
`09/565,733)
`
`U.S. Patent No. 5,220,577 to Opower (“Opower”)
`
`U.S. Patent No. 5,822,354 to Vitruk (“Vitruk”)
`
`Plaintiff Novanta Corporation’s Proposed Claim Constructions in
`Novanta Corporation v. Iradion Laser, Inc., Case 1:15-cv-01033-
`SLR-SRF (Nov. 7, 2016)
`Original Complaint in Novanta Corporation v. Iradion Laser, Inc.,
`Civil Action No. 1:15-cv-01033-SLR
`Original Complaint in Synrad, Inc. v. Iradion Laser, Inc., C.A. No.
`12-cv-00650-ML-DLM
`Proof of Summons in Synrad, Inc. v. Iradion Laser, Inc., C.A. No.
`12-cv-00650-ML-DLM
`Proof of Summons in Novanta Corporation v. Iradion Laser, Inc.,
`Civil Action No. 1:15-cv-01033
`Declaration of Dr. J. Gary Eden
`
`Curriculum Vitae of Dr. J. Gary Eden
`
`2007 W.T. Silfvast, Laser Fundamentals, (2d ed., Cambridge Univ. Press,
`2004)
`U.S. Patent Publication No. 4,169,251 to Laakmann (“Laakmann”)
`
`2008
`
`2009 Webster’s New World College Dictionary (4th ed., 1999)
`
`2010
`
`2011
`
`K. M. Abramski, A. D. Colley, H. J. Baker, and D. R. Hall, IEEE
`Journal of Quantum Electronics, vol. 32, pp. 340-349 (1996)
`Laser Theory and Applications, Lecture 2, available at
`https://courses.engr.illinois.edu/ece455/Files/Galvinlectures/02_Cav
`ityModes.pdf
`
`vii
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`Case IPR2017-00244
`Patent 6,198,759
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`I.
`
`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.107, Patent Owner Novanta Corporation submits
`
`this Preliminary Response to Iradion Laser, Inc.’s Petition for Inter Partes Review
`
`(Paper 1), challenging claims 11, 14, 24, 26, and 28 of U.S. Patent No. 6,198,759
`
`(“the ’759 Patent”) on three grounds.
`
`Under 35 U.S.C. § 314(a),
`
`The Director may not authorize an inter partes review to be instituted
`unless the Director determines that the information presented in the
`petition filed under section 311 and any response filed under section
`313 shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.
`
`As discussed below, there is not a reasonable likelihood that Petitioner
`
`would prevail with respect to any challenged claim. Therefore, IPR should not be
`
`instituted. The Board should deny Iradion’s petition for at least three reasons: (1)
`
`the petition was not timely filed; (2) the prior art (taken alone or together) does not
`
`disclose or teach any sort of beam shaping in the longitudinal axis, let alone
`
`circular or elliptical laser beam shaping, as claimed in the challenged claims; and
`
`(3) a person having ordinary skill in the art (a “PHOSITA”) would not have been
`
`motivated to combine these references.
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`1
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`Patent 6,198,759
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`II.
`
`IPR SHOULD BE DENIED BECAUSE PETITION IS NOT TIMELY
`Petitioner Must File Petition within 1 year of Service of a
`A.
`Complaint Alleging Infringement
`Under 35 U.S.C. § 315(b),
`
`An inter partes review may not be instituted if the petition requesting
`the proceeding is filed more than 1 year after the date on which the
`petitioner, real party in interest, or privy of the petitioner is served
`with a complaint alleging infringement of the patent.
`
`See also 37 C.F.R. 42.101(b).
`
`The statutory language is clear—IPR may not be instituted more than one
`
`year after the date the petitioner “is served with a complaint alleging infringement
`
`of the patent” (emphasis added). When the terms of the statute are unambiguous,
`
`courts “turn to the legislative history to see if Congress meant something other than
`
`what it said statutorily.” Universal Remote Control, Inc. v. Universal Electronics,
`
`Inc., Paper No. 9 at 5, IPR2013-00168 (PTAB 2013) (quoting Ethicon, Inc. v.
`
`Quigg, 849 F.2d 1422, 1426 (Fed. Cir. 1988).
`
`Congress meant what it said in the statute. See 157 Cong. Rec. S5429 (daily
`
`ed. Sept. 8, 2011) (statement of Sen. Kyl) (“it is important that the section 315(b)
`
`deadline afford defendants a reasonable opportunity to identify and understand the
`
`patent claims that are relevant to the litigation.”); Meeting of H. Comm. on the
`
`Judiciary, Transcript of Markup of H.R. 1249, p. 72 (April 14, 2011) (statement of
`
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`Judiciary Comm. Chair. Lamar Smith) (“The inter partes proceeding . . . has been
`
`carefully written to balance the need to encourage its use while at the same time
`
`preventing the serial harassment of patent holders.”). Actually, Congress warned
`
`that any extension of the time period would be a mistake because it “may turn the
`
`inter partes program into a tool for litigation gamesmanship rather than a
`
`meaningful and less expensive alternative to litigation.” H.R. 1249 at 72
`
`(statement of Judiciary Comm. Chair. Lamar Smith). The legislative history shows
`
`the terms of the statute were carefully drafted to provide notice to the accused
`
`infringer and to prevent serial harassment. See St. Jude Medical, Cardiology
`
`Division, Inc. v. Volcano Corp., Paper No. 29, IPR2013-00258 at 3 (PTAB Oct.
`
`16, 2013) (“viewing 315(b)’s terms restrictively would leave a patent open to serial
`
`attack”).
`
`Congress carefully and explicitly made service of a patent infringement
`
`complaint the only trigger for the time bar in § 315(b). Congress did not provide
`
`any exceptions or modifications based on what happens after the service of a
`
`complaint. Had Congress wanted to make subsequent dismissal relevant to the
`
`time bar, it could have. It did not. The Board in St. Jude Medical properly ruled
`
`that according to the plain meaning of 35 U.S.C. § 315(b), “[s]ervice of a
`
`complaint alleging infringement triggers applicability of § 315(b), even if that
`
`complaint is later dismissed with prejudice.” Id. at 7, citing Universal Remote
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`Control, Inc. v. Universal Electronics, Inc., IPR2013-00168, Paper 9 at 6-7 (PTAB
`
`2103). Because Congress provided no clearly expressed intent to the contrary and
`
`made no distinction whatsoever between a complaint subsequently dismissed with
`
`prejudice and one dismissed without prejudice, the Board’s inquiry is ended and
`
`Iradion’s petition is untimely under § 315(b). Prior Board decisions holding
`
`otherwise were wrongly decided and should not be followed.
`
`Background Facts and Related Litigation
`B.
`This IPR stems from the second patent infringement lawsuit Novanta has
`
`filed against Iradion for infringing the ’759 Patent and U.S. Patent No. 6,614,826
`
`(“the ’826 Patent”), the challenged patent in related proceeding Iradion Laser, Inc.
`
`v. Novanta Corporation, Case No. IPR2017-00241.
`
`The first complaint was filed in 2012. Ex. 2001 (Cmplt.), ¶¶ 10-28.
`
`Through a published Iradion patent application, Novanta learned of Iradion’s plans
`
`to manufacture and sell products in the United States that would infringe
`
`Novanta’s patents. Id. at ¶¶ 14-17, 21. After numerous unsuccessful attempts to
`
`inspect these products, Novanta filed a complaint against Iradion for patent
`
`infringement in the District of Delaware on September 13, 2012, styled Synrad,
`
`Inc. v. Iradion Laser, Inc., C.A. No. 12-cv-00650-ML-DLM. Ex. 2002. at ¶¶ 22-
`
`28. This first complaint was served on Iradion on September 14, 2012. Ex. 2003
`
`(Proof of Summons).
`
`4
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`Only after the complaint was filed did Iradion allow Novanta to inspect a
`
`key component of Iradion’s gas laser products, namely, the Iradion model 154 and
`
`156 gas lasers. Ex. 2001 (Cmplt.) at ¶ 29. Novanta’s counsel inspected the
`
`component, and, after confirming these lasers were not made in accordance with
`
`Iradion’s patent publication, and based on Iradion’s representations that these were
`
`the only products being made and sold in the U.S. that could possibly be of
`
`concern to Novanta, Novanta voluntarily dismissed the suit. Id. at ¶¶ 29-30.
`
`Two years later, Iradion published a “white paper” on its website stating that
`
`Iradion’s products used two different designs for its laser products, and Novanta
`
`thus discovered that one of Iradion designs was, in fact, Novanta’s patented laser
`
`arrangement. Id. at ¶ 32. Subsequently, Novanta obtained and inspected an
`
`Iradion model 1510 gas laser and discovered that it was designed, manufactured,
`
`and constructed differently from what Iradion represented was the design,
`
`manufacture, and construction of the Iradion 154 and 156 gas lasers in 2012. Id. at
`
`¶ 31. Further investigation confirmed that Novanta had been misled by Iradion’s
`
`2012 “bait and switch” strategy, and Iradion was in fact manufacturing gas lasers,
`
`including alternate versions of its model 154 and 156 lasers, that were consistent
`
`with Iradion’s earlier patent publication and were in fact infringing Novanta’s
`
`patents – just as Novanta had suspected since 2012. Id.
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`Novanta learned that Iradion intentionally, deceitfully, and fraudulently
`
`misled Novanta to believe the sample key component sent to Novanta in 2012 to
`
`demonstrate non-infringement was representative of all Iradion gas laser products
`
`when, in fact, Iradion was already making and selling, or planning to make and
`
`sell, other infringing gas lasers. Id. at ¶ 33.
`
`On November 9, 2015, confirming Iradion’s deceit and ongoing
`
`infringement, Novanta filed the second patent infringement suit specifically
`
`alleging willful infringement of the same patents asserted in the 2012 complaint.
`
`This second complaint was served on Iradion on November 10, 2015. Ex. 2004
`
`(Proof of Summons).
`
`C. The IPR Petition is Not Timely
`The statutory language is clear: an IPR petition filed more than one year
`
`after a petitioner has been served with a complaint alleging infringement of the
`
`challenged patent must be rejected. Petitioner was served with a complaint
`
`alleging infringement of the ’759 Patent on September 13, 2012. Ex. 2003.
`
`Petitioner filed its petition requesting IPR on November 10, 2016 (Paper 1)—more
`
`than four years later. The petition was not timely and, therefore, should be
`
`rejected.
`
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`
`The fact that the September 2012 complaint was subsequently dismissed
`
`should not change the result based on the unambiguous statutory language in 35
`
`U.S.C. §315(b).
`
`Although the Board has concluded in some cases that IPR petitions were not
`
`time barred where a prior complaint had been voluntarily dismissed without
`
`prejudice (see, e.g., Oracle v. Click-to Call, IPR2013-00312, Paper 40, 4), those
`
`cases were wrongly decided as a matter of law. Even if not, this case is different
`
`and commands a different result. Decisions in which the Board has not applied the
`
`1 year time bar due to a prior complaint having been voluntarily dismissed were
`
`based on the rationale that a voluntary dismissal is a nullifying act that puts the
`
`parties in the position as though the dismissed complaint was never filed. Id. That
`
`fiction ought not apply here because the “voluntary” dismissal was procured by
`
`Petitioner’s actual fraud. Petitioner deceived Novanta into dismissing the original
`
`complaint. Had Petitioner not deceived Novanta, then the original complaint
`
`would not have been dismissed and its service date would trigger the one-year time
`
`bar. To allow Petitioner to have an extension under these circumstances would
`
`allow Petitioner to “turn the inter partes program into a tool for litigation
`
`gamesmanship,” which directly contradicts Congress’s intent.
`
`For the above reasons, Patent Owner requests the Board deny institution of
`
`this IPR due to the petition not being timely filed.
`
`7
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`III.
`
`IPR SHOULD BE DENIED BECAUSE PETITIONER FAILS TO
`PROVIDE MEANINGFUL EVIDENCE THAT SUPPORTS ITS
`ALLEGATIONS
`Rule 104 requires a petition to identify, among other things, “[h]ow the
`
`construed claim is unpatentable under the statutory grounds identified in paragraph
`
`(b)(2) of this section.” 37 C.F.R. 42.104(b)(4). By failing to include expert
`
`evidence and failing to address, let alone resolve, the level of ordinary skill in the
`
`art, Petitioner failed to include information necessary for obviousness analysis, and
`
`failed to identify how any of the challenged claims can be found unpatentable as
`
`obvious. The Board should deny institution on this basis alone.
`
`A. No Expert Declaration
`For whatever reason, Iradion has chosen not to offer any expert witness
`
`testimony. If this were simple technology, then perhaps that choice would not be
`
`fatal. In this case, however, the technology is complex, making expert evidence
`
`critical. Petitioner’s failure to provide any evidence other than the two prior art
`
`references to support its attorney argument is fatal in this case.
`
`B. No Level of Ordinary Skill in the Art
`Resolving the level of ordinary skill in the pertinent art is one of three
`
`factual inquiries underpinning an obviousness analysis. See Graham v. John Deere
`
`Co., 383 U.S. 1, (1966) (announcing factual inquiries involved in obviousness
`
`analysis: (1) determining scope and content of prior art; (b) ascertaining
`
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`Case IPR2017-00244
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`
`differences between the claimed invention and prior art; and (c) resolving the level
`
`of ordinary skill in the pertinent art).
`
`The level of ordinary skill in the art may be established by factors such as:
`
`“(1) educational level of the inventor; ( 2) type of problems encountered in the art;
`
`(3) prior art solutions to those problems; (4) rapidity with which innovations are
`
`made; (5) sophistication of the technology; and (6) educational level of active
`
`workers in the field.” Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics
`
`Rencol Ltd., IPR2014-00309, Paper 83, slip op. at 34, n. 17 (PTAB Mar. 23, 2014).
`
`To be persuasive before the PTAB, parties should provide detailed support
`
`for their positions. See Oracle Corp. v. Thought, Inc., IPR2014-00119, Paper 45,
`
`slip op. at 23 (Apr. 23, 2015) (failing to “explain[ ] sufficiently why a graduate
`
`degree would be necessary”).
`
`Petitioner did not address (let alone provide any detailed support for) the
`
`level of ordinary skill in the art. As a result, Petitioner failed to include in its
`
`petition information necessary to establish obviousness.
`
`Given the complexity of the technology in this case, properly defining the
`
`level of ordinary skill in the art is critical and failure to do so could result in grave
`
`misapprehension of the prior art. This is exemplified in Petitioner’s false and
`
`completely unsupported statement, “a person of ordinary skill in the art would
`
`recognize that the terms ‘longitudinal’ and ‘transverse’ are merely relative
`
`9
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`Case IPR2017-00244
`Patent 6,198,759
`
`nomenclature.” Paper 1, 10, n. 4. Petitioner’s statement could not be farther from
`
`the truth and actually highlights a central issue with the prior art that makes it not
`
`relevant to the challenged claims in this IPR. As explained in more detail below,
`
`Opower and Vitruk are not relevant to the challenged claims because they disclose
`
`lasers that are shaped in the wrong dimensional axes. As depicted in the annotated
`
`figures below, this difference in a waveguide gas laser is critical and would
`
`immediately be recognized as such by any person of ordinary skill in the art.
`
`
`
`
`
`10
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`Case IPR2017-00244
`Patent 6,198,759
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`IV. RESPONSE TO SUBSTANTIVE GROUNDS
`If the Board does not reject the petition for being untimely, or for failing to
`
`sufficiently identify grounds of unpatentability, or for failing to provide
`
`meaningful evidence that supports Petitioner’s allegations, Patent Owner requests
`
`the Board deny institution because Petitioner has failed to establish a reasonable
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`likelihood that it will prevail with respect to at least one of the claims challenged in
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`the petition.
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`A. The Technology of the’759 Patent
`1. Introduction to Lasers
`A laser is a device for generating a beam of light having quite unique
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`properties. As shown by the diagram below, most lasers include two mirrors, one
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`at either end of a region known as the “gain” or “amplifying medium.” The
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`function of the gain medium is to increase the intensity of (amplify) light of a
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`given frequency or wavelength.
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`Ex. 2005, ¶ 32, citing Ex. 2007, Figure 1-1, p. 2.
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`The pathway along which the light travels from mirror to mirror within a
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`laser is known as the longitudinal or laser axis, and is often labeled by the letter “z”
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`in diagrams. Ex. 2005, ¶ 33. One example of the usage of the term “longitudinal”
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`in laser engineering can be seen in Silfvast, where he discusses specific
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`wavelengths of light known as longitudinal modes:
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`“When a laser gain medium is inserted within a Fabry-Perot cavity
`with mirrors located at the ends of the medium, a similar set of
`enhancements or modes in the form of standing-wave patterns equally
`spaced in frequency will build up within the cavity. …. The various
`standing waves…. are referred to as longitudinal waves because they
`are associated with the longitudinal direction of the electromagnetic
`waves within the cavity”.
`Id., citing Ex. 2007, p. 380.
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`Figure 11-6 from Silfvast (shown below) confirms the longitudinal direction
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`or axis in a laser is that associated with a line drawn between the mirrors.
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`Ex. 2005, ¶ 34, citing Ex. 2007, Figure 11-16, p. 382.
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`Another example of the ordinary use of the word “longitudinal” in laser
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`engineering is given by statements of Katherine D. Laakmann, the named inventor
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`of U.S. Patent Publication No. 4,169,251. See Ex. 2005, ¶ 35 and Ex. 2008. For
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`example, Laakmann states:
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`When a laser according to the invention is to be operated as an
`oscillator, a pair of aligned reflectors 24 and 26, one of which is made
`partially transmissive, may be disposed at opposite ends of the
`chamber 18 along the longitudinal axis thereof.
`Ex. 2008, 3:44-48.
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`This common use of the word “longitudinal” is consistent with the definition
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`of the term. Webster’s New World College Dictionary, for example, defines
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`longitudinal as: “of or in length; running or placed lengthwise; opposed to
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`transverse”. See Ex. 2005, ¶ 37 and Ex. 2009.
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`Thus, virtually all lasers have a clear optical axis, which is known as the
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`longitudinal axis. Ex. 2005, ¶ 37. The “longitudinal axis” has an important
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`technical meaning in the art because frequency modes, known as longitudinal
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`modes, are associated with this axis. Id. Therefore, defining a particular axis of a
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`laser as the “longitudinal” axis is not a matter of mere choice, but rather is well-
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`defined in the laser community. Id.
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`As also noted by Webster’s Dictionary (see Ex. 2009), a plane perpendicular
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`(orthogonal) to the longitudinal axis of a laser is known as a transverse plane.
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`Whether laser light is propagating between the two mirrors, or it has left the laser
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`cavity through one of the mirrors (one that is “partially transmissive”), the beam
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`will have a particular intensity profile in the plane that is transverse to the
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`longitudinal axis. One illustration of this concept is if, for example, one were to
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`insert a card into the laser beam, a specific pattern will be observed. See Ex. 2005,
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`¶ 38.
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`Various intensity patterns exist, and these are known as transverse modes of
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`the laser. See Ex. 2005, ¶¶ 38-40. The lowest order transverse mode, TEM00, also
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`known as the fundamental mode, has an intensity profile that is far from uniform.
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`Id. at ¶ 39. It is circular in shape and the laser intensity falls rapidly away from the
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`center (the longitudinal axis coming out of the page). Id. Laser beams having this
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`TEM00 transverse intensity profile are often coveted by laser engineers because
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`such beams are the most “focusable.” Id. That is, TEM00 beams can be focused
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`with a lens (or a series of lenses) to the smallest spots possible. Id.
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`Higher order modes, such as TEM43, for example, become increasingly
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`rectangular in their overall shape. Id. Such higher-order beams (or beams
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`comprising combinations of higher-order modes) are to be avoided if one wishes to
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`focus a beam tightly for applications such as cutting or welding materials. Id.
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`That is, the higher-order transverse modes, such as TEM21 or TEM02, cannot be
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`focused as tightly as can the TEM00 transverse mode. Id. For this reason, when
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`focusing a laser beam to the smallest spot possible is of the highest priority, it is
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`imperative that every effort be made to ensure that the beam of the laser of interest
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`has the TEM00 transverse mode intensity profile. Id. This is why lasers built into
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`specialty microscopes, for example, all produce beams having the lowest order
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`transverse mode (TEM00). Id.
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`Higher order TEM mode beams can also be quite useful if one does not wish
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`to focus the laser beam but rather desires to irradiate a surface uniformly. Id. at ¶
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`40. In this instance, a laser engineer will wish to combine (superimpose) many
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`(generally more than ten) transverse modes so as to yield laser beams that are
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`rectangular or square, and the optical intensity is constant over the entire beam
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`cross-section. Id. This is precisely what is done in a number of laser applications
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`such as the laser corneal surgical eye procedure known as LASIK, as well as in
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`several semiconductor manufacturing processes. Id.
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`The transverse laser modes an optical or laser engineer chooses for a laser
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`design depend critically on the industrial or medical application that one has in
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`mind. Ex. 2005, ¶ 41. The ability to select specific tra