Filed on behalf of:
`
`
`
`Iradion Laser, Inc.
`By: Joshua P. Larsen (Lead Counsel)
`joshua.larsen@btlaw.com
`Paul B. Hunt (Back-up Counsel)
`paul.hunt@btlaw.com
`
`
`
`
` Paper No. 1
`
`
`
` Date: November 10, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`IRADION LASER, INC.,
`
`Petitioner,
`
`v.
`
`NOVANTA CORP. (formerly GSI GROUP CORP.),
`
`Patent Owner.
`
`_________________
`
`Patent 6,198,759
`_________________
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,198,759
`
`
`
`
`
`
`Iradion Laser, Inc.
`By: Joshua P. Larsen (Lead Counsel)
`joshua.larsen@btlaw.com
`Paul B. Hunt (Back-up Counsel)
`paul.hunt@btlaw.com
`
`
`
`
` Paper No. 1
`
`
`
` Date: November 10, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`IRADION LASER, INC.,
`
`Petitioner,
`
`v.
`
`NOVANTA CORP. (formerly GSI GROUP CORP.),
`
`Patent Owner.
`
`_________________
`
`Patent 6,198,759
`_________________
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,198,759
`
`
`
`
`Patent 6,198,759
`Petition for Inter Partes Review
`
`
`TABLE OF CONTENTS
`
`Page
`
`TABLE OF AUTHORITIES ................................................................................... iii
`
`EXHIBIT LIST ........................................................................................................ iv
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ........................... 1
`
`A.
`
`Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1) ............................. 1
`
`B.
`
`Related Matters under 37 C.F.R. § 42.8(b)(2) ...................................... 1
`
`C.
`
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) ................... 2
`
`D.
`
`Service Information under 37 C.F.R. § 42.8(b)(4) ................................ 2
`
`II.
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................... 2
`
`III. GROUNDS FOR STANDING UNDER § 42.104(a) ..................................... 2
`
`IV.
`
`IDENTIFICATION OF CHALLENGE UNDER § 42.104(b) ....................... 3
`
`A.
`
`Claim Construction under 37 C.F.R. § 42.104(b)(3) ............................ 4
`
`B.
`
`Ground 1 – Anticipation of Claims 11, 14, 24, 26, and 28
`under 35 U.S.C. § 102(b) by Opower (Ex. 1004) ................................. 6
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Claim 11 ...................................................................................... 6
`
`Claim 14 ....................................................................................14
`
`Claim 24 ....................................................................................15
`
`Claim 26 ....................................................................................23
`
`Claim 28 ....................................................................................24
`
`Conclusion regarding Ground 1 ................................................25
`
`i
`
`
`
`Patent 6,198,759
`Petition for Inter Partes Review
`
`
`C.
`
`Ground 2 – Anticipation of Claims 11, 14, 24, 26, and 28
`under 35 U.S.C. § 102(b) by Vitruk (Ex. 1005) ..................................25
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Claim 11 ....................................................................................26
`
`Claim 14 ....................................................................................32
`
`Claim 24 ....................................................................................33
`
`Claim 26 ....................................................................................37
`
`Claim 28 ....................................................................................38
`
`Conclusion Regarding Ground 2 ..............................................39
`
`D. Ground 3 – Obviousness of Claims 11, 14, 24, 26, and 28
`under 35 U.S.C. § 103 over Opower (Ex. 1004) and/or
`Vitruk (Ex. 1005) ................................................................................40
`
`V.
`
`CONCLUSION AND RELIEF REQUESTED .............................................43
`
`
`
`
`
`ii
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`
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`Patent 6,198,759
`Petition for Inter Partes Review
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Page(s)
`
`Boston Sci. Scimed, Inc. v. Cordis Corp.,
`554 F.3d 982 (Fed. Cir. 2009) ................................................................. 41, 42
`
`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009) ..................................................................... 25
`
`In re King,
`801 F.2d 1324 (Fed.Cir.1986) ................................................................. 15, 33
`
`In re McDaniel,
`293 F.3d 1379 (Fed. Cir. 2002) ................................................................ 40,41
`
`Kennametal, Inc. v. Ingersoll Cutting Tool Co.,
`780 F.3d 1376 (Fed. Cir. 2015) ..............................................................passim
`
`Net MoneyIN v. Verisign,
`545 F.3d 1359 (Fed. Cir. 2008) ..............................................................passim
`
`Oracle Corp. v. Click-to-Call Techs. LP,
`IPR2013-00312 (PTAB Oct. 30, 2013) ........................................................... 3
`
`Vibrant Media, Inc. v. Gen’l Elec. Co.,
`IPR2013-00172 (PTAB July 28, 2014) ........................................................... 5
`
`Norian Corp. v. Stryker Corp.,
`363 F.3d 1321 (Fed. Cir. 2004) ..................................................................... 43
`
`
`
`Rules
`
`37 C.F.R. § 42.100(b) ................................................................................................ 4
`
`77 Fed. Reg. 48756 (August 14, 2012) ...................................................................... 6
`
`
`
`
`
`iii
`
`
`
`Patent 6,198,759
`Petition for Inter Partes Review
`
`
`Ex. No.
`
`Brief Description
`
`EXHIBIT LIST
`
`1001
`
`U.S. Patent No. 6,198,759 to Broderick et al. (“the ’759 Patent”)
`
`1002
`
`U.S. Patent No. 6,614,826 to Bethel et al. (“the ’826 Patent”)
`
`1003
`
`File Wrapper of the ’759 Patent (U.S. Patent Application No.
`09/472,733)
`
`1004
`
`U.S. Patent No. 5,220,577 to Opower (“Opower”)
`
`1005
`
`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)
`
`1006
`
`
`
`iv
`
`
`
`Patent 6,198,759
`Petition for Inter Partes Review
`
`
`Iradion Laser, Inc. (“Petitioner”), in accordance with 35 U.S.C. § 311-319
`
`and 37 C.F.R. § 42.100, hereby petitions for inter partes review of claims 11, 14,
`
`24, 26, and 28 of U.S. Patent No. 6,198,759 to Broderick et al. (Ex. 1001, “the
`
`’759 Patent”). The ’759 Patent issued on March 6, 2001, from U.S. Patent
`
`Application No. 09/472,733, filed December 27, 1999, and is titled “Laser System
`
`and Method for Beam Enhancement.” Ex. 1001 (cover). According to USPTO
`
`records, the ’759 Patent is assigned to GSI Group Corp. (“Patent Owner”).
`
`Petitioner understands that Patent Owner changed its name to “Novanta Corp.”
`
`earlier this year.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)
`
`Petitioner Iradion Laser, Inc., is the real party-in-interest. Petitioner also
`
`provides notice that it is wholly owned by Sysver AG, a Swiss corporation.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`
`The ’759 Patent is being asserted by Patent Owner against Petitioner in
`
`ongoing litigation captioned Novanta Corporation v. Iradion Laser, Inc., Case
`
`1:15-cv-01033-SLR-SRF, in the United States District Court for the District of
`
`Delaware. That litigation also involves U.S. Patent No. 6,614,826 to Bethel et al.
`
`(Ex. 1002, “the ’826 Patent”). Petitioner is filing a separate petition for inter
`
`partes review of the ’826 Patent today.
`
`1
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`
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`Patent 6,198,759
`Petition for Inter Partes Review
`
`
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`
`Petitioner designates Joshua P. Larsen, Reg. No. 62,761, as Lead Counsel
`
`and Paul B. Hunt, Reg. No. 37,154, as Back-up Counsel.
`
`D.
`
`Service Information under 37 C.F.R. § 42.8(b)(4)
`
`Petitioner’s Lead and Back-up Counsel may be served electronically at
`
`IradionService@btlaw.com, by postal mail and hand-delivery at Barnes &
`
`Thornburg LLP, 11 South Meridian Street, Indianapolis, Indiana 46204, by
`
`telephone at 317-231-1313, and by facsimile at 317-231-7433.
`
`II. PAYMENT OF FEES – 37 C.F.R. § 42.103
`
`The Patent and Trademark Office is authorized to charge the fee set out in
`
`37 C.F.R. § 42.15(a), and any additional fees due, to Deposit Account No. 10-
`
`0435, with reference to file number 47055-2.
`
`III. GROUNDS FOR STANDING UNDER § 42.104(a)
`
`Petitioner certifies that the ’759 Patent is available for inter partes review
`
`and that Petitioner is not barred or estopped from requesting an inter partes review
`
`challenging the patent claims on the grounds identified in this Petition.
`
`Petitioner was originally served with a complaint alleging infringement of
`
`the ’759 Patent on September 14, 2012, in connection with Synrad, Inc. v. Iradion
`
`Laser, Inc., Case 1:12-cv-00650-ML-LDA (D.R.I.). However, that complaint was
`
`2
`
`
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`Patent 6,198,759
`Petition for Inter Partes Review
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`voluntarily dismissed without prejudice on October 26, 2012. “The Federal Circuit
`
`consistently has interpreted the effect of such dismissals as leaving the parties as
`
`though the action had never been brought.” Oracle Corp. v. Click-to-Call Techs.
`
`LP, IPR2013-00312, Paper 26 at 17 (PTAB Oct. 30, 2013) (precedential in
`
`relevant part). “Accordingly, the dismissal of the infringement suit brought by
`
`[Patent Owner] nullifies the effect of the service of the complaint and, as a
`
`consequence, does not bar [Petitioner] from pursuing an inter partes review.” Id.
`
`Petitioner was more recently served with a complaint alleging infringement
`
`of the ’759 Patent on November 10, 2015, in connection with Novanta
`
`Corporation v. Iradion Laser, Inc., Case 1:15-cv-01033-SLR-SRF (D. Del.). This
`
`Petition is timely filed within the one year period set out in 35 U.S.C. § 315(b).
`
`IV.
`
`IDENTIFICATION OF CHALLENGE UNDER § 42.104(b)
`
`Petitioner requests inter partes review of claims 11, 14, 24, 26, and 28 of the
`
`’759 Patent on the grounds set out in the table below, and requests that each of
`
`claims 11, 14, 24, 26, and 28 of the ’759 Patent be found unpatentable. An
`
`explanation of unpatentability under the statutory grounds identified below is
`
`provided in the form of detailed description that follows, indicating where each
`
`element can be found in the cited prior art, and the relevance of that prior art.
`
`3
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`
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`Patent 6,198,759
`Petition for Inter Partes Review
`
`
`Ground Challenged Claims Statutory Ground and Prior Art
`
`Ground 1 11, 14, 24, 26, and
`28
`
`Anticipated under 35 U.S.C. § 102(b) by U.S.
`Patent No. 5,220,577 to Opower (Ex. 1004,
`“Opower”)
`
`Ground 2 11, 14, 24, 26, and
`28
`
`Anticipated under 35 U.S.C. § 102(b) by U.S.
`Patent No. 5,822,354 to Vitruk (Ex. 1005,
`“Vitruk”)
`
`Ground 3 11, 14, 24, 26, and
`28
`
`Obvious under 35 U.S.C. § 103 over Opower
`(Ex. 1004) and/or Vitruk (Ex. 1005)
`
`
`Opower and Vitruk each qualify as prior art to the ’759 Patent at least under
`
`35 U.S.C. § 102(b). Specifically, Opower was issued on June 15, 1993, Ex. 1004
`
`(cover), and Vitruk was issued on October 13, 1998, Ex. 1005 (cover), both of
`
`which are more than one year before the ’759 Patent’s filing date of December 27,
`
`1999. While Opower and Vitruk were both cited on an information disclosure
`
`statement during prosecution of the ’759 Patent, neither reference was discussed by
`
`the Examiner or the Patent Owner. Ex. 1003.
`
`A. Claim Construction under 37 C.F.R. § 42.104(b)(3)
`
`Each claim term of an unexpired patent claim subject to inter partes review
`
`is given its “broadest reasonable construction in light of the specification of the
`
`patent in which it appears.” 37 C.F.R. § 42.100(b). For this proceeding only,
`
`4
`
`
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`Patent 6,198,759
`Petition for Inter Partes Review
`
`Petitioner submits that no specific claim constructions are necessary.1 Rather, the
`
`claim terms should “be given their broadest reasonable interpretation, as
`
`
`1 Petitioner does not concede that any claim of the ’759 Patent meets statutory
`
`standards for patent claiming, and neither Petitioner’s
`
`interpretation nor
`
`Petitioner’s analysis of the claims of the ’759 Patent relative to the cited prior art
`
`should be treated as such a concession. Petitioner recognizes that inter partes
`
`review is not an appropriate forum to address certain issues, such as the failure to
`
`comply with 35 U.S.C. § 112, and therefore reserves all rights to contend that any
`
`claim of the ’759 Patent is invalid for reasons outside of the scope of this inter
`
`partes review, including but not limited to lack of definiteness, written description,
`
`and/or enablement under 35 U.S.C. § 112. The presence of definiteness and
`
`description problems in the claims of the ’759 Patent is no bar to inter partes
`
`review in appropriate circumstances; the Board may set aside such issues when
`
`reviewing claims under 35 U.S.C. §§ 102 and 103. See, e.g., Vibrant Media, Inc.
`
`v. Gen’l Elec. Co., IPR2013-00172, 2014 WL 3749773, at *6–7 (PTAB July 28,
`
`2014).
`
`5
`
`
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`Patent 6,198,759
`Petition for Inter Partes Review
`
`understood by one of ordinary skill in the art and consistent with the disclosure.”
`
`77 Fed. Reg. 48756, 48764 (August 14, 2012).2
`
`B. Ground 1 – Anticipation of Claims 11, 14, 24, 26, and 28 under 35
`U.S.C. § 102(b) by Opower (Ex. 1004)
`
`1.
`
`CLAIM 11
`
`Opower discloses each and every limitation of claim 11 of the ’759 Patent.
`
`In particular, each of Opower’s first embodiment (Ex. 1004 at FIGS. 1-4; 4:3-10),
`
`second embodiment (id. at FIG. 5; 4:11-13), third embodiment (id. at FIG. 6; 4:14-
`
`16), fourth embodiment (id. at FIG. 7; 4:17-19), and fifth embodiment (id. at FIG.
`
`8; 4:20-22) is a laser including all of the features recited in claim 11. While the
`
`
`2 Exhibit 1006 submitted with this Petition contains claim constructions for the
`
`’759 Patent and ’826 Patent recently proposed by Patent Owner in the co-pending
`
`litigation, Novanta Corporation v. Iradion Laser, Inc., Case 1:15-cv-01033-SLR-
`
`SRF. While Petitioner disagrees with Patent Owner’s proposed constructions in
`
`Exhibit 1006 (particularly under the claim construction standards set out in
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)), Petitioner
`
`submits that the broadest reasonable interpretations applied in this proceeding
`
`should be no narrower than the proposed constructions advocated by Patent Owner
`
`in Exhibit 1006.
`
`6
`
`
`
`Patent 6,198,759
`Petition for Inter Partes Review
`
`five laser embodiments have different configurations of their waveguides 16, 18,
`
`216, 218, Opower teaches that all five embodiments function in a similar manner
`
`to tailor a transverse profile of a laser beam within the resonator cavity of the laser.
`
`Id. at 7:5-11; 7:51-65; 8:19-33; 8:61-68. As such, Opower uses the same or similar
`
`reference numerals among the drawings of the five embodiments and repeatedly
`
`incorporates discussion of the earlier embodiments when describing the later
`
`embodiments. Id. at 6:43-47; 8:34-38; 9:11-12.
`
`The preamble of claim 11 recites, “a laser.” Ex. 1001 at 14:33. Opower
`
`teaches a “Waveguide Laser with Variable Waveguide Thickness.” Ex. 1004
`
`(title). As mentioned above, Opower discloses five illustrative embodiments of an
`
`“inventive high-power laser.” Id. at 4:25-26; 6:40-41; 7:12-13; 8:34-38; 8:64-66;
`
`see also FIGS. 1-8.
`
`Next, claim 11 recites that the laser comprises “one or more gain regions.”
`
`Ex. 1001 at 14:34. The Opower lasers each include a gain region 60, 260
`
`containing a laser gas. Ex. 1004 at Abstract; FIGS. 1-8; 4:50-68 (“A gas discharge
`
`chamber 60 is enclosed by the two waveguide surfaces 12 and 14 and, according to
`
`the invention, this chamber extends in the transverse direction 40 at least from the
`
`longitudinal side edges 36 and 38 as far as the longitudinal side edges 44 and 46
`
`and, in the longitudinal direction 32, from the end face edges 22 and 24 as far as
`
`the end face edges 28 and 30, preferably, however, beyond these as far as the
`
`7
`
`
`
`Patent 6,198,759
`Petition for Inter Partes Review
`
`respective resonator mirrors 50 and 52. The respective laser gas is enclosed in the
`
`gas discharge chamber.”); 9:23-26. In use, the “laser gas in the gas discharge
`
`chamber 60 is preferably excited by coupling in high frequency” to create a gain
`
`medium that provides optical gain within the laser. Id. at 5:1-12. Opower teaches
`
`that the respective waveguides 16, 18, 216, 218 – which bound the height or
`
`thickness of the laser gas disposed in the chamber 60, 260 – may comprise
`
`electrodes for this purpose. Id. at 3:55-64; 4:50-5:12. This arrangement taught by
`
`Opower is the same configuration used by the gas laser embodiments disclosed in
`
`the ’759 Patent. See, e.g., Ex. 1001 at FIGS. 1-2B, 4-10, 12, 13; 4:20-30; 4:60-62;
`
`5:4-6 (“The resonator cavity 20 serves as a discharge area having a discharge
`
`space, more generally known as a gain region, for the gas lasing medium.”).
`
`Claim 11 next recites that the laser comprises “a first mirror and a second
`
`mirror being on first and second ends of the gain regions, the first and second
`
`mirrors contributing to form a resonator cavity, the resonator cavity containing the
`
`gain regions.” Ex. 1001 at 14:35-38. Each of the Opower lasers includes first and
`
`second mirrors 54, 56 (with mirror surfaces 50, 52, 250, 252) that are positioned on
`
`first and second ends of the gain region 60, 260 and form a resonator cavity. Ex.
`
`1004 at Abstract; FIGS. 1, 2, 6; 1:6-23 (light waves resonate in chamber 60, 260
`
`via “multiple back and forth reflection[s] between the second and the first mirror
`
`8
`
`
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`Patent 6,198,759
`Petition for Inter Partes Review
`
`surfaces”); 2:15-24; 4:41-49; 5:60-61; 6:56-61; 7:66-8:18.3 Like the ’759 Patent,
`
`Opower teaches that the gain region 60, 260 is positioned within the resonator
`
`cavity formed between the mirrors 54, 56 (specifically, mirror surfaces 50, 52, 250,
`
`252). Id. at 4:50-68; compare Ex. 1001 at 5:4-6 (“The resonator cavity 20 serves
`
`as a discharge area having a discharge space, more generally known as a gain
`
`region, for the gas lasing medium.”).
`
`Claim 11 then recites that the laser comprises “one or more sections of
`
`lasing media, each lasing media section having width along a first transverse axis,
`
`thickness along a second transverse axis, and length along a longitudinal axis, the
`
`lasing media sections having a total length extending along the longitudinal axis,
`
`the lasing media sections occupying at least a portion of the gain regions.” Ex.
`
`1001 at 14:39-45. As noted above, a laser gas fills the gain region 60, 260 in each
`
`of the Opower lasers, forming a section of lasing media that occupies the gain
`
`region 60, 260. Ex. 1004 at Abstract; FIGS. 1-8; 4:50-6:12 (“The respective laser
`
`gas is enclosed in the gas discharge chamber.”); 7:24-35. As shown in FIGS. 1-8
`
`of Opower, the sections of lasing media (i.e., the laser gas filling the gain regions
`
`60, 260) each have width along an axis 32, thickness along another axis (extending
`
`
`3 The resonator mirrors of Opower’s second, fourth, and fifth embodiments are
`
`omitted from FIGS. 5, 7, and 8 for clarity. Ex. 1004 at 4:11-13; 4:17-22.
`
`9
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`
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`Patent 6,198,759
`Petition for Inter Partes Review
`
`between the pairs of waveguides 16, 18, 216, 218), and length along an axis 40,
`
`240. Id. at Title; FIGS. 1-8.4 In the first and second embodiments of Opower, the
`
`section of lasing media (i.e., the laser gas filling the gain region 60) extends along
`
`the axis 40, 240 from the left side 34 to the right side 42 of the gain region 60 and,
`
`thus, has a total length equal to the dimension of the gain region 60 in the direction
`
`40. Id. at FIGS. 1-5; 4:34-41. In the third, fourth, and fifth embodiments of
`
`Opower, the section of lasing media (i.e., the laser gas filling the gain region 260)
`
`extends along the azimuthal axis 240 around the entire cylinder 218 and, thus, has
`
`
`4 While Opower refers to the axis 32 as a “longitudinal direction” and the axis 40,
`
`240 as a “transverse direction” (reversed from claim 11), a person of ordinary skill
`
`in the art would recognize that the terms “longitudinal” and “transverse” are
`
`merely relative nomenclature. There is no technical reason that Opower’s
`
`direction 40, 240 and direction 32 cannot be considered a “longitudinal axis” and a
`
`“transverse axis,” respectively. It should also be noted that, even if Opower’s
`
`longitudinal direction 32, transverse direction 40, 240, and the distance between
`
`the waveguides 16, 18, 216, 218 are considered to correspond to the claimed
`
`“longitudinal axis,” “first transverse axis,” and “second transverse axis,”
`
`respectively, claim 11 of the ’759 Patent still reads on the fourth and fifth
`
`embodiments of Opower.
`
`10
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`
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`Patent 6,198,759
`Petition for Inter Partes Review
`
`a total length equal to the circumference of the gain region 260 in the azimuth
`
`direction 240. Id. at FIGS. 6-8; 7:51-65.
`
`Claim 11 concludes by reciting, “one or more portions of the lasing media
`
`sections being shaped to have continuous variations in thickness along the
`
`longitudinal axis, the thickness of the lasing media section having a total variation
`
`between first and second positions along the longitudinal axis due to the
`
`continuous variations of at least 5% of the maximum thickness of the lasing media,
`
`the first and second longitudinal positions being separated by at least 25% of the
`
`total length.” Ex. 1001 at 14:45-53. Opower teaches that the portions of the lasing
`
`media sections (i.e., the laser gas filling the gain regions 60, 260) between the non-
`
`parallel second waveguide surface regions 76, 78, 176, 178, 276, 278 are shaped to
`
`have continuous variations in thickness along the axis 40, 240. Ex. 1004 at FIGS.
`
`1-8; 5:21-6:12; 6:53-68; 7:35-65; 8:19-33; 8:39-9:12; see also 1:40-68; 2:39-45;
`
`2:60-3:2.5 Opower teaches that, “in a functioning embodiment, . . . the distance
`
`
`5 Additionally, in the fourth and fifth embodiments of Opower, the portion of the
`
`lasing media section (i.e., the laser gas filling the gain region 260) between the
`
`non-parallel second waveguide surface regions 276, 278 is shaped to have
`
`continuous variations in thickness along the axis 32 as result of the two cylinder
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`axes 228’, 230’ being non-parallel. Ex. 1004 at FIGS. 7-8; 2:39-45; 2:60-3:2;
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`11
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`between the second waveguide surface regions is approximately 1.5 mm to
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`approximately 2 mm.” Id. at 9:15-18. As such, Opower teaches that, in one
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`illustrative embodiment, the lasing media sections (i.e., the laser gas filling the
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`gain regions 60, 260 between the non-parallel second waveguide surface regions
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`76, 78, 176, 178, 276, 278) may have a maximum thickness of 2 mm, and the total
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`variation in thickness due to the continuous variations may be 2 mm – 1.5 mm =
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`0.5 𝑚𝑚
`0.5 mm, which represents 25% of the maximum thickness (
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`2 𝑚𝑚
`
`× 100% =
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`25%). Id.
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`
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`Annotated Version of FIG. 3 from Ex. 1004
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`8:39-9:12. Opower teaches that the variation in thickness of the laser gas between
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`the non-parallel second waveguide surface regions 276, 278 may be 25% of the
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`maximum thickness over the entire total length. Id. at 9:15-18.
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`12
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`In Opower’s first and second embodiments shown in FIGS. 1-5, the left side
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`34 of the gain region 60 and the right side 42 of the gain region 60 – which are
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`separated by 100% of the total length of the lasing media section along the axis 40
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`– would have thicknesses of 1.5 mm and 2 mm, respectively. Id. at FIGS. 1, 3, 5;
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`9:15-18. In Opower’s third, fourth, and fifth embodiments shown in FIGS. 6-8, the
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`narrowest point 262 of the gain region 260 and the widest point 264 of the gain
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`region 260 – which are separated by 50% of the total length of the lasing media
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`section along the axis 240 – would have thicknesses of 1.5 mm and 2 mm,
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`respectively. Id. at FIGS. 6-8; 9:15-18.
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`Annotated Version of FIG. 6 from Ex. 1004
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`13
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` In summary, Opower discloses all of the limitations of claim 11 of the ’759
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`Patent arranged and combined in the same way as recited in the claim and, thus,
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`anticipates claim 11. Net MoneyIN v. Verisign, 545 F.3d 1359, 1371 (Fed. Cir.
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`2008). Furthermore, because a person of skill in the art, reading Opower, “would
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`‘at once envisage’ the claimed arrangement or combination” of claim 11, Opower
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`anticipates this claim. Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d
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`1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681 (CCPA
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`1962)).
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`2.
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`CLAIM 14
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`Opower discloses the additional limitations of claim 14 of the ’759 Patent.
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`Claim 14 recites, “The laser of claim 11 wherein the thickness of one of the lasing
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`media sections at a first longitudinal position along the longitudinal axis is at least
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`10% different than the thickness of one of the other lasing media sections at a
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`second longitudinal position along the longitudinal axis.” Ex. 1001 at 14:61-65.
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`As discussed in detail above with regard to claim 11, Opower teaches that, “in a
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`functioning embodiment, . . . the distance between the second waveguide surface
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`regions is approximately 1.5 mm to approximately 2 mm.” Ex. 1004 at 9:15-18.
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`As such, Opower teaches that, in one illustrative embodiment, the lasing media
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`sections (i.e., the laser gas filling the gain regions 60, 260 between the non-parallel
`
`second waveguide surface regions 76, 78, 176, 178, 276, 278) may have a
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`14
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`Patent 6,198,759
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`thickness of 1.5 mm at a first position along the axis 40, 240 and a thickness of 2
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`mm at a second position along the axis 40, 240, which is 33% increase from the
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`thickness at the first position ((
`1.5 𝑚𝑚
`
`2 𝑚𝑚
`
`− 1) × 100% = 33%). Id.
`
`Because Opower discloses all of the limitations of claim 14 of the ’759
`
`Patent arranged and combined in the same way as recited in the claim, Opower
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`anticipates claim 14. Net MoneyIN, 545 F.3d at 1371. Furthermore, because a
`
`person of skill in the art, reading Opower, “would ‘at once envisage’ the claimed
`
`arrangement or combination” of claim 14, Opower anticipates this claim.
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`Kennametal, 780 F.3d at 1381.
`
`3.
`
`CLAIM 24
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`Opower discloses each and every limitation of claim 24 of the ’759 Patent.
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`In particular, Opower teaches that, during use, each of his first embodiment (Ex.
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`1004 at FIGS. 1-4; 4:3-10), second embodiment (id. at FIG. 5; 4:11-13), third
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`embodiment (id. at FIG. 6; 4:14-16), fourth embodiment (id. at FIG. 7; 4:17-19),
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`and fifth embodiment (id. at FIG. 8; 4:20-22) will perform the method recited in
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`claim 34.6 While the five laser embodiments have different configurations of their
`
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`6 In re King, 801 F.2d 1324, 1326 (Fed.Cir.1986) (“[I]f a previously patented
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`device, in its normal and usual operation, will perform the function [claimed] in a
`
`
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`15
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`waveguides 16, 18, 216, 218, Opower teaches that all five embodiments function
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`in a similar manner to tailor a transverse profile of a laser beam within the
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`resonator cavity of the laser. Id. at 7:5-11; 7:51-65; 8:19-33; 8:61-68.
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`The preamble of claim 24 recites “a method of forming a laser.” Ex. 1001 at
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`16:10. Opower teaches a “Waveguide Laser with Variable Waveguide Thickness.”
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`Ex. 1004 (title). Each of Opower’s five embodiments forms a laser during its
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`normal and usual operation. Id. at FIGS. 1-8; Abstract (describing the parallel first
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`waveguide surface regions as forming an initial wave bundle and describing the
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`increasing distance between the second waveguide surface regions as resulting in
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`“increasing expansion of the wave bundle system”); 1:40-68 (same); 5:21-6:12
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`(same); 7:5-11 (“the initial wave bundle 82 is formed and proceeding from this a
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`wave bundle system 88 then expands with spatial coherence”); see also 1:6-23
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`(light waves resonate in chamber 60, 260 via “multiple back and forth reflection[s]
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`between the second and the first mirror surfaces”); 5:60-61; 6:31-39; 7:35-65;
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`8:19-33; 8:39-9:12.
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`subsequent [ ] process patent, then such [] process patent [is] . . . anticipated by the
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`former patented device.”)
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`16
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`Next, claim 24 recites, “the method comprising: forming a set of one or
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`more lasing media sections, the set of lasing media sections having a total length,
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`each of the lasing media sections having a width along a first transverse axis of a
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`first set of one or more transverse axes, each of the lasing media sections having a
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`thickness along a second transverse axis of a second set of one or more transverse
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`axes, and each of the lasing media sections having a length along a longitudinal
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`axis of a set of one or more longitudinal axes.” Ex. 1001 at 16:10-19. The
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`Opower lasers each include a gain region 60, 260 containing a laser gas. Ex. 1004
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`at Abstract; FIGS. 1-8; 4:50-68; 9:23-26. In use, the “laser gas in the gas discharge
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`chamber 60 is preferably excited by coupling in high frequency” to create a gain
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`medium that provides optical gain within the laser. Id. at 5:1-12. During normal
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`and usual operation, the laser gas fills the gain region 60, 260 in each of the
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`Opower lasers, forming a lasing media section that occupies the gain region 60,
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`260. Id. at Abstract; FIGS. 1-8; 4:50-6:12; 7:24-35.
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`As shown in FIGS. 1-8 of Opower, the sections of lasing media (i.e., the
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`laser gas filling the gain regions 60, 260) each have width along an axis 32,
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`thickness along another axis (extending between the pairs of waveguides 16, 18,
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`17
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`216, 218), and length along an axis 40, 240. Id. at Title; FIGS. 1-8.7 In the first
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`and second embodiments of Opower, the section of lasing media (i.e., the laser gas
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`filling the gain region 60) extends along the axis 40, 240 from the left side 34 to
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`the right side 42 of the gain region 60 and, thus, has a total length equal to the
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`dimension of the gain region 60 in the direction 40. Id. at FIGS. 1-5; 4:34-41. In
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`the third, fourth, and fifth embodiments of Opower, the section of lasing media
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`(i.e., the laser gas filling the gain region 260) extends along the azimuthal axis 240
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`around the entire cylinder 218 and, thus, has a total length equal to the
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`7 While Opower refers to the axis 32 as a “longitudinal direction” and the axis 40,
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`240 as a “transverse direction” (reversed from claim 11), a person of ordinary skill
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`in the art would recognize that the terms “longitudinal” and “transverse” are
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`merely relative nomenclature. There is no technical reason that Opower’s
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`direction 40, 240 and direction 32 cannot be considered a “longitudinal axis” and a
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`“transverse axis,” respectively. It should also be noted that, even if Opower’s
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`longitudinal direction 32, transverse direction 40, 240, and the distance between
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`the waveguides 16, 18, 216, 218 are considered to correspond to the claimed
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`“longitudinal axis,” “first transverse axis,” and “second transverse axis,”
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`respectively, claim 11 of the ’759 Patent still reads on the fourth and fifth
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`embodiments of Opower.
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`18
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`circumference of the gain region 260 in the azimuth direction 240. Id. at FIGS. 6-
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`8; 7:51-65.
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`Claim 24 concludes by reciting that the method further comprises “varying
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`the thickness of the lasing media sections to have continuous variations for
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`portions of one or more sections of the set of lasing media sections along their
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`respective longitudinal axes so that one section of the set of lasing media sections
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`at a first longitudinal position thereof has a thickness that is at least 5% smaller
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`than one section of the set of lasing media sections at a second longitudinal
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`position thereof due to the continuous variations, the first and second longitudinal
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`positions being separated from each other along
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