Takeaway: Arguing a high level of skill in the art, even in cases involving complicated technology, may not be successful, and arguments based on that higher level of skill in the art may similarly fail.

In its Final Written Decision, the Board found that Petitioner had established by a preponderance of the evidence that all challenged claims of the ‘575 patent are unpatentable. The Board also denied Petitioner’s Motion to Exclude and dismissed Patent Owner’s Motion to Exclude.

The ‘575 patent “relates to a catadioptric projection optical system, exposure apparatus, and exposure method and, more particularly, to a high-resolution catadioptric projection optical system suitable for use in production of semiconductor devices and liquid-crystal display devices by photolithography.”

Turning to claim construction, the Board stated that claims in an unexpired patent are interpreted according to their broadest reasonable construction. The Board expressly construed five claim terms: boundary lens, a refractive index is 1, effective imaging area, every effective imaging area, and the second imaging optical system.

With respect to the term “boundary lens,” Patent Owner argued that the term should be construed more narrowly than set forth in the Decision on Institution. The Board was not persuaded, finding that Patent Owner’s proposal, among others, impermissibly imported limitations from the specification and would render other claim terms superfluous.  With respect to the term “a refractive index … is 1,” the Board agreed with Petitioner’s proposed construction, finding it consistent with the specification and the remainder of the claims.  With regard to the term “effective imaging area,” the Board again agreed with Petitioner’s proposal as being consistent with the specification.  Regarding the term “every effective imaging area,” the Board disagreed with Petitioner’s proposal, instead adopting a broader construction of the term.  Finally, regarding the term “the second imaging optical system,” the Board disagreed with Petitioner’s proposal, finding that the term refers back to the “second imaging optical system” recited in claim 19.

Before addressing the prior art, the Board considered Patent Owner’s argument that Petitioner’s declarant, Mr. Juergens, does not qualify as an expert because he does not have the appropriate level of experience based on the “highly specialized nature of projection optical systems.” Petitioner responded that Patent Owner’s own expert, Dr. Sasian, conceded that Mr. Juergens is an expert, even inviting Mr. Juergens to guest lecture in his classes on lens design.  First, the Board disagreed with Patent Owner’s heightened level of skill in the art, and then found that Mr. Juergens qualified as at least one of ordinary skill in the art.

Turning to the asserted grounds of unpatentability, the Board first addressed the alleged obviousness of claims 1-3, 8-12, 16-20, 23-26, 29, ad 31-33 over Terasawa and the Immersion References. Patent Owner argued that the references do not disclose a “boundary lens,” there is no reasonable expectation of success in combining the references, and secondary considerations established nonobviousness.  First, the Board determined that the prior art discloses a boundary lens, finding that Patent Owner’s arguments were based on its incorrect claim construction.  Second, regarding the expectation of success, the Board found that Patent Owner’s arguments were based on an improper assumption and noted that Patent Owner’s expert conceded that the required experiments were comparable to known techniques.  Thus, it found that a person of ordinary skill in the art would have had a reasonable expectation of success.  Finally, Patent Owner argued that the ‘575 patent met the long-felt and unsolved need for higher resolution in the semiconductor industry, that there was initial skepticism regarding the invention, and that there was evidence of copying.  The Board was not persuaded, finding that Patent Owner had not established “that the alleged need was long-felt and unmet prior to the invention of the ‘575 patent.”  The Board also found that the initial skepticism and surprise that was expressed was not related to the actual invention, but rather to a feature not found in the claims.  Finally, the Board was not persuaded by the evidence of copying, finding that the evidence did not show that the alleged copy fell within the scope of any claim.

Patent Owner also argued that the combination of references do not enable a person of skill in the art to make and use the subject matter of claim 1. The Board was not persuaded, finding that Patent Owner did not establish that the amount of experimentation required to make and use the invention would have been undue, even though the experimentation may have been complex.

The Board then addressed the asserted obviousness of claim 30 over Terasawa, the Immersion References, and Asai. Patent Owner argued that Asai does not cure the deficiencies of the other references with respect to claim 1, from which claim 30 depends.  However, the Board was not persuaded by Patent Owner’s arguments regarding claim 1, and therefore, found claim 30 to be unpatentable for similar reasons.

Finally, the Board addressed the parties’ Motions to Exclude. Regarding Petitioner’s motion, the Board had found the claims unpatentable even without excluding the identified evidence.  Therefore, the motion was dismissed as moot.  Regarding Patent Owner’s motion, the motion was contingent upon the Board granting Petitioner’s Motion to Exclude.  Because Petitioner’s motion was dismissed, Patent Owner’s motion was denied.

Carl Zeiss SMT GmbH v. Nikon Corporation, IPR2013-00362
Paper 41: Final Written Decision
Dated: November 4, 2014
Patent: 7,348,575 B2
Before: Howard B. Blankenship, Sally C. Medley, and Matthew R. Clements Written by: Clements