Shafer et al.v.Omura

Board of Patent Appeals and Interferences

Sep 14, 2012

12816863 (B.P.A.I. Sep. 14, 2012)

BoxInterferences@uspto.gov Paper 291
Tel: 571-272-4683 Filed: 14 September 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

DAVID SHAFER, WILHELM ULRICH,
AURELIAN DODOC, RUDOLF VON BUENAU,
HANS-JUERGEN MANN, ALEXANDER EPPLE,
SUSANNE BEDER, and WOLFGANG SINGER
Junior Party
(Application 12/816,863),

v.

YASUHIRO OMURA
Senior Party
(Patent 7,309,870).
____________________

Patent Interference No. 105,834 (SCM)
(Technology Center 2800)
____________________

Before JAMESON LEE, SALLY C. MEDLEY, and JENNIFER S. BISK,
Administrative Patent Judges.

BISK, Administrative Patent Judge.

Judgment – Merits – Bd. R. 127

Interference No. 105,834
2
In a concurrent paper, we denied Omura’s motion to designate Omura 1
claims 25-32, 37-39, and 45-47 as not corresponding to Count 1. We also 2
determined that all of Omura’s involved claims are unpatentable under 35 3
U.S.C. § 112, first paragraph, for lack of written description in the 4
specification. Accordingly, Omura is without standing to continue in the 5
interference. 6
Accordingly, it is 7
ORDERED that judgment is entered against Omura for count 1 8
(Paper 1 at 4); 9
FURTHER ORDERED that claims 25-32, 37-39, and 43-47 of 10
Omura’s involved patent are CANCELLED, 35 U.S.C. § 135(a); 11
FURTHER ORDERED that the parties shall note the requirements 12
of 35 U.S.C. § 135(c) and Bd. R. 205; and 13
FURTHER ORDERED that a copy of this judgment be entered in 14
the administrative records of the involved Omura patent and Shafer 15
application. 16

Interference No. 105,834
3
cc (via electronic delivery):
Attorney for Shafer:
Marc M. Wefers, Ph.D., Esq.
Chris C. Bowley, Ph.D., Esq.
FISH & RICHARDSON P.C.
E-mail: wefers@fr.com
E-mail: bowley@fr.com

Oliver R. Ashe, Jr., Esq.
ASHE, P.C.
E-mail: oashe@ashepc.com

Attorney for Omura:
Matthew I. Kreeger, Esq.
Jonathan Bockman, Esq.
MORRISON & FOERSTER LLP
E-mail: mkreeger@mofo.com
E-mail: jbockman@mofo.com

BoxInterfrences@uspto.gov Paper 290
Tel: 571-272-4683 Filed: 14 September 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

DAVID SHAFER, WILHELM ULRICH,
AURELIAN DODOC, RUDOLF VON BUENAU,
HANS-JUERGEN MANN, ALEXANDER EPPLE,
SUSANNE BEDER, and WOLFGANG SINGER
Junior Party
(Application 12/816,863),

v.

YASUHIRO OMURA
Senior Party
(Patent 7,309,870).
____________________

Patent Interference No. 105,834 (SCM)
(Technology Center 2800)
____________________

Before JAMESON LEE, SALLY C. MEDLEY, and JENNIFER S. BISK,
Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION — MOTIONS — Bd. R. 125
Interference No. 105,834
2
A. Introduction 1
This interference is before us to decide preliminary motions. 2
Omura filed one motion requesting that Omura claims 25-32, 37-39, 3
and 45-47 be designated as not corresponding to Count 1. (Omura Motion 1; 4
Paper 63). 5
Shafer filed the following motions for judgment against Omura based 6
on: (1) “collateral estoppel and issue preclusion” (Shafer Motion 1; Paper 7
20); (2) the written description requirement of 35 U.S.C. § 112, ¶ 1 (Shafer 8
Motion 2; Paper 60); and (3) anticipation (Shafer Motion 4; Paper 58). 9
We DENY Omura Motion 1; DENY Shafer Motion 1; GRANT 10
Shafer Motion 2; and DISMISS Shafer Motion 4. 11
Shafer seeks to be accorded benefit for the purpose of priority of 12
earlier applications. (Shafer Motion 3; Paper 57). 13
We DISMISS Shafter Motion 3. 14
B. The Interfering Subject Matter 15
The interfering subject matter generally relates to catadioptric 16
projection objectives for imaging a pattern arranged in an object surface onto 17
an image surface. Count 1, the sole count, is Shafer claim 43 or Omura claim 18
43. (Paper 1 at 4). Shafer claim 43 is identical to Omura claim 43 and is as 19
follows: 20
A catadioptric projection objective for imaging a pattern provided 21
in an object surface of the projection objective onto an image surface of 22
the projection objective comprising: 23
a first, refractive objective part for imaging the pattern provided in 24
the object surface into a first intermediate image; 25
a second objective part for imaging the first intermediate image 26
into a second intermediate image; 27
Interference No. 105,834
3
a third, refractive objective part for imaging, the second 1
intermediate image onto the image surface; 2
wherein the second objective part includes a first concave mirror 3
having a first continuous mirror surface and a second concave mirror 4
having a second continuous mirror surface; 5
pupil surfaces are formed between the object plane and the first 6
intermediate image, between the first and the second intermediate images 7
and between the second intermediate image and the image plane; 8
all concave mirrors are arranged optically remote from a pupil 9
surface; 10
wherein a first optical axis length OAL1 is defined between the 11
object surface and a vertex of a concave mirror geometrically closest to 12
the object surface, and a third optical axis length OAL3 is defined 13
between a vertex of a concave mirror geometrically closest to the image 14
surface and the image surface; and wherein the condition MG>0.7 holds 15
for a mirror group position parameter MG=OAL1/OAL3. 16
C. Findings of fact 17
1. Shafer is involved in this interference on the basis of 18
application 12/816,863, filed 16 June 2010 (the “Shafer Application”). 19
2. Omura is involved in this interference on the basis of patent 20
7,309,870, issued 18 December 2007, based on application 11/583,934, filed 21
20 October 2006 (the “Omura Patent”). 22
3. Shafer real party in interest is Carl Zeiss SMT Gmbh. (Paper 6). 23
4. Omura real party in interest is Nikon Corporation. (Paper 3). 24
5. The claims of the parties are: 25
Shafer: 25-31, 37, 38, and 43-46 26
Omura: 1-49 27
Interference No. 105,834
4
6. The claims of the parties that correspond to Count 1 are: 1
Shafer: 25-31, 37, 38, and 43-46 2
Omura: 25-32, 37-39, and 43-47 3
7. The claims of the parties that do not correspond to Count 1, 4
and therefore are not involved in the interference are: 5
Shafer: none 6
Omura: 1-24, 33-36, 40-42, 48, and 49 7
D. Omura Motion 1 8
Omura moves to designate claims 25-32, 37-39, and 45-47 9
(collectively the “Omura Contested Claims”) as not corresponding to 10
Count 1, the sole count. A claim corresponds to a count if the subject matter 11
of the count, treated as prior art to the claim, would have anticipated or 12
rendered obvious the subject matter of the claim. Bd. R. 207(b)(2). The 13
burden of proof is on the movant. Bd. R. 208(b). For the reasons that follow, 14
Omura Motion 1 is denied. 15
Both parties agree that originally, Shafer claims 25-32, 37-39, and 45-16
47 were the same as the Omura Contested Claims. (Paper 63, Omura fact 1; 17
admitted). During prosecution of the Shafer Application, the Examiner 18
issued a restriction requirement. (Ex. 1005). In response, Shafer made an 19
election, without objecting to the Examiner’s restriction requirement, and 20
amended claims 25, 37, and 45 so that all of the remaining claims in the 21
Shafer Application depended from claim 43, the count in this interference. 22
(Ex. 1006). Omura argues that because the Omura Contested Claims do not 23
depend from claim 43, they should not have been included in this 24
interference. (Paper 63 at 4). Instead, Omura asserts that the Omura 25
Contested Claims are independent and distinct inventions from the invention 26
Interference No. 105,834
5
recited in Count 1. Id. Omura sets forth several arguments supporting its 1
position. 2
First, Omura argues that the Examiner already determined that the 3
Omura Contested Claims are patentably distinct because during ex parte 4
prosecution there was a restriction requirement to the identical claims in the 5
Shafer Application. (Paper 63 at 1-4). Because Shafer did not contest the 6
restriction requirement, Omura asserts that Shafer conceded that the subject 7
matter of the Omura Contested Claims is patentably distinct from the subject 8
matter of the count. (Paper 63 at 4). The Federal Circuit, however, has 9
confirmed that an unappealable restriction requirement should not be 10
elevated from its purpose of examination convenience. Applied Materials, 11
Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1568 12
(Fed. Cir. 1996). “Restriction requirements are like other PTO 13
‘requirements’ that are ‘matters of a discretionary, procedural or 14
nonsubstantive nature.’” Bristol-Myers Squibb Co. v. Pharmachemie B.V., 15
361 F.3d 1343, 1352 (Fed. Cir. 2004) (J. Newman dissenting) (quoting In re 16
Hengehold, 440 F.2d 1395, 1403 (CCPA 1971)). Thus, the Examiner’s 17
unappealable restriction requirement issued to Shafer during ex parte 18
prosecution is not persuasive evidence that the Omura Contested Claims are 19
patentably distinct from Count 1. 20
Notwithstanding the restriction requirement by the Examiner involved 21
in Shafer’s application, that Examiner’s view is not binding on the Board or 22
even on the Examiner in charge of Omura’s own application. The 23
presumption Omura must overcome is that all claims designated as 24
corresponding to the count at the time of declaration of this interference are 25
not patentably distinct from the count. Omura’s reliance on the fact that a 26
restriction requirement was made in Shafer’s application is unhelpful. 27
Interference No. 105,834
6
Second, Omura argues that Shafer’s suggestion for this interference 1
did not include the required showing that the Omura Contested Claims 2
correspond to the count. (Paper 63 at 4-5). However, when an interference is 3
declared, a presumption is established that the count defines a single 4
patentable invention. 37 CFR § 41.201 (definition of “count”). The contents 5
of Shafer’s suggestion for this interference are irrelevant to whether, in this 6
motion, Omura has met its burden to show, with appropriate evidence, that 7
the Omura Contested Claims do not correspond to Count 1. 8
Third, Omura argues that the subject matter claimed in each of the 9
independent Omura Contested Claims (Omura claims 25, 37, and 45) would 10
not have been anticipated or rendered obvious by the subject matter of the 11
count. (Paper 63 at 8-17). Omura asserts that the following three limitations 12
are not disclosed or suggested by the count: (1) “at least one double asphere 13
having a first aspheric surface and a second aspheric surface immediately 14
adjacent to the first aspheric surface, the double asphere being formed by 15
facing adjacent aspheric surfaces of two consecutive lenses” (the “double 16
asphere limitation”) as recited by Omura claim 25 (Paper 63 at 10-12); (2) 17
“an aperture stop is positioned in the third objective part between a region of 18
maximum beam diameter and the image surface in a region of a converging 19
beam” (the “aperture stop limitation”) as recited by Omura claim 37 (Paper 20
63 at 13-15); and (3) “at least one of 8 and 9 consecutive lenses upstream of 21
the image surface have positive refractive power” (the “at least eight 22
consecutive lenses limitation”) as recited by Omura claim 45 (Paper 63 at 23
15-17). Omura has sufficiently demonstrated that the subject matter of the 24
count would not anticipate the Omura Contested Claims. However, Omura 25
must also show that given the subject matter of the count as prior art, the 26
Omura Contested Claims would not have been obvious. 27
Interference No. 105,834
7
The double asphere limitation 1
Omura argues that the subject matter of the count fails to suggest any 2
reasons why it would be beneficial to use the double asphere limitation in a 3
projection objective. (Paper 63 at 12). Thus, Omura concludes that one of 4
ordinary skill in the art would not have had any reason to modify the 5
invention of the count to reach the invention of Omura claim 25. Further, 6
Omura asserts that it “is not aware of any prior art directed to a projection 7
objective with the claimed first, refractive objective part, second objective 8
part, and third, refractive objective part that would have cured the 9
deficiencies of the subject matter of the count.” (Paper 63 at 12). 10
Omura relies on the testimony of Dr. Ruda to support these 11
arguments. The pertinent paragraphs (Ex. 1008) to which we are directed are 12
reproduced here: 13
17. The subject matter of claim 43 fails to suggest any reasons for 14
why it would be beneficial to use in a projection objective the “double 15
asphere having a first aspheric surface and a second aspheric surface 16
immediately adjacent to the first aspheric surface, the double asphere 17
being formed by facing adjacent aspheric surfaces of two consecutive 18
lenses.” Accordingly, one of ordinary skill in the art would not have had 19
any reason to modify the invention of claim 43 to reach the invention of 20
Omura claim 25 based on the subject matter of claim 43. Therefore, 21
Omura claim 25 would not have been anticipated, either expressly or 22
inherently, or rendered obvious by the subject matter of the claim 43. 23
24
18. Finally, I am not aware of any prior art directed to a projection 25
objective with the claimed first, refractive objective part, second 26
objective part, and third, refractive objective part as recited in claim 25 27
that would have cured the deficiencies of the subject matter of claim 43. 28
29
Dr. Ruda’s statement that the subject matter of claim 43 fails to 30
suggest any reasons for why it would be beneficial to use the double asphere 31
limitation or that one of ordinary skill in the art would not have had any 32
Interference No. 105,834
8
reason to modify the invention of claim 43 based on the subject matter of 1
claim 43 is insufficient to demonstrate the non-obviousness of Omura claim 2
25 in view of the count. Specifically, what is missing is an accounting for 3
the known prior art at the time of the invention. Dr. Ruda does not discuss 4
any prior art or indicate that he was unaware of any prior art that would, 5
when combined with the count, result in Omura claim 25. It is not sufficient 6
to say that the count alone does not teach or suggest a certain claimed 7
feature. Nor is it sufficient to say that a claim would not have been obvious 8
based on the count. There must be an accounting of the relevant prior art 9
beyond the count. See, e.g., Pechiney v. Cryovac, 73 USPQ2d 1571, 1577-78 10
(BPAI 2004). For that reason, Omura did not sufficiently establish the level 11
of ordinary skill in the art, one of the necessary factual inquiries underlying 12
the obviousness determination. See Graham v. John Deere Co., 383 U.S. 1, 13
17-18 (1966). 14
Dr. Ruda states that he is unaware of any prior art directed to a 15
projection objective with the three claimed objective parts that would have 16
cured the deficiencies of the count. That statement, however, is an 17
unexplained opinion. Had Dr. Ruda identified and discussed the closest prior 18
art known to him, and then explained why such prior art is still deficient, we 19
would have something meaningful to consider. Also, Dr. Ruda has not 20
discussed what lens design factors one with ordinary skill in the art would 21
have considered and why that consideration, in combination with the subject 22
matter of the count, would not have led to the subject matter of the claims at 23
issue in this motion. Our rules state that expert testimony that does not 24
disclose the underlying facts or data on which an opinion is based is entitled 25
to little or no weight. 37 C.F.R. § 41.158(a). See also Rohm and Haas Co. v. 26
Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing in the Federal 27
Interference No. 105,834
9
Rules of Evidence requires the finder of fact to credit the unsupported 1
assertions of an expert witness). 2
The aperture stop limitation 3
Omura argues that the subject matter of the count fails to suggest any 4
reasons why it would be beneficial to place the aperture stop in the specific 5
region as claimed in Omura claim 37. (Paper 63 at 14). Thus, as with the 6
double asphere limitation discussed above, Omura concludes that one of 7
ordinary skill in the art would not have had any reason to modify the 8
invention of the count to reach the invention of Omura claim 37. And again, 9
Omura asserts that it “is not aware of any prior art directed to a projection 10
objective with the claimed first, refractive objective part, second objective 11
part, and third, refractive objective part that would have cured the 12
deficiencies of the subject matter of the count.” (Paper 63 at 14-15). 13
Omura again relies on the testimony of Dr. Ruda to support these 14
arguments. The pertinent paragraphs (Ex. 1008) to which we are directed are 15
reproduced here: 16
23. Further, one of ordinary skill in the art would have understood 17
that the claimed aperture stop positioning specifics is not inherently 18
disclosed or rendered obvious by the subject matter of the claim 43. The 19
subject matter of the claim 43, which is directed to the concave mirror 20
positioning specifics, fails to give any reasons why it would be beneficial 21
to place the aperture stop in the specific region claimed in claim 37 – “in 22
the third objective part between a region of maximum beam diameter and 23
the image surface in a region of a converging beam.” Accordingly, one of 24
ordinary skill in the art would not have had any reason to modify the 25
invention of the claim 43 to reach the invention of claim 37 in view of 26
the subject matter disclosed by the claim 43. 27
28
. . . 29
30
26. Finally, I am not aware of any prior art directed to a projection 31
objective with the claimed first, refractive objective part, second 32
Interference No. 105,834
10
objective part, and third, refractive objective part as recited in claim 37 1
that would have cured the deficiencies of the subject matter of claim 43. 2
3
Omura’s arguments suffer from the same problems set forth above. 4
Dr. Ruda’s statement that the subject matter of claim 43 fails to suggest any 5
reasons for why it would be beneficial to use the aperture stop limitation or 6
that one of ordinary skill in the art would not have had any reason to modify 7
the invention of claim 43 based on the subject matter of claim 43 is 8
insufficient to demonstrate the non-obviousness of Omura claim 37 in view 9
of the count. Again, what is missing is an accounting for the known prior art 10
at the time of the invention and the knowledge of one of ordinary skill in that 11
art. Dr. Ruda does not identify or discuss the closest prior art known to him 12
and then explain why such prior art combined with the count would not have 13
made obvious to a person of ordinary skill in the art the inclusion of an 14
aperture stop with the recited position. 15
As with Omura claim 25, Dr. Ruda’s unexplained statement that he is 16
unaware of any prior art that would cure the deficiencies of the count is 17
entitled to little, if any, weight. 18
The at least eight consecutive lenses limitation 19
Omura argues that the subject matter of the count fails to suggest any 20
reasons why it would be beneficial to employ at least eight consecutive 21
lenses upstream of the image surface in a projection objective. (Paper 63 at 22
16). Again, this leads Omura to conclude that one of ordinary skill in the art 23
would not have had any reason to modify the invention of the count to reach 24
the invention of Omura claim 45. Further, Omura asserts that it “is not aware 25
of any prior art directed to a projection objective with the claimed first, 26
refractive objective part, second objective part, and third, refractive 27
Interference No. 105,834
11
objective part that would have cured the deficiencies of the subject matter of 1
the Count.” (Paper 63 at 17). 2
Omura relies on the testimony of Dr. Ruda to support these 3
arguments. The pertinent paragraphs (Ex. 1008) to which we are directed are 4
reproduced here: 5
31. Further, one of ordinary skill in the art would have understood 6
that this [at least eight consecutive lenses] limitation is not inherently 7
disclosed or rendered obvious by the subject matter of the claim 43. The 8
subject matter of the claim 43 fails to show that the use of eight 9
consecutive lenses is the necessary and inevitable result of practicing the 10
invention of the claim 43 or give any reasons for why it would be 11
beneficial to employ at least eight consecutive lenses upstream of the 12
image surface in a projection objective. Accordingly, one of ordinary 13
skill in the art would not have had any reason to modify the invention of 14
the claim 43 to reach the invention of claim 45. 15
16
. . . 17
18
34. Finally, I am not aware of any prior art directed to a projection 19
objective with the claimed first, refractive objective part, second 20
objective part, and third, refractive objective part as recited in claim 45 21
that would have cured the deficiencies of the subject matter of claim 43. 22
23
Omura’s arguments suffer from the same problems set forth above. 24
Dr. Ruda’s statement that the subject matter of claim 43 fails to suggest any 25
reasons for why it would be beneficial to use the at least eight consecutive 26
lenses limitation or that one of ordinary skill in the art would not have had 27
any reason to modify the invention of claim 43 based on the subject matter 28
of claim 43 is insufficient to demonstrate the non-obviousness of Omura 29
claim 45 in view of the count. 30
Again, what is missing is an accounting for the known prior art at the 31
time of the invention and the knowledge of one of ordinary skill in that art. 32
Dr. Ruda does not identify or discuss the closest prior art known to him and 33
Interference No. 105,834
12
then explain why such prior art combined with the count would not have 1
made claim 43 obvious to a person of ordinary skill in the art. 2
As with Omura claims 25 and 37, Dr. Ruda’s unexplained statement 3
that he is unaware of any prior art that would cure the deficiencies of the 4
count is entitled to little, if any, weight. 5
Regarding the dependent contested claims (26-32, 38-39, and 46-47) 6
Omura argues only that these claims would not have been rendered obvious 7
by the count due to their inclusion of the three limitations discussed above. 8
(Paper at 17). 9
For the reasons articulated above, we find that Dr. Ruda’s testimony 10
on the issue of whether the Omura Contested Claims are nonobvious in view 11
of the count is conclusory, not supported by a sufficient factual basis, and is 12
entitled to little, if any weight. Therefore, Omura has not sufficiently shown 13
that the Omura Contested Claims are patentably distinct from the count. 14
E. Shafer Motion 1 15
Shafer moves for judgment that Omura’s involved claims are barred 16
by issue preclusion based on a previous Board decision in a related 17
interference, 105,749 (’749), also between Shafer and Omura. Omura was 18
involved in the ’749 interference based on its 7,309,870 patent (’870) (the 19
same patent involved in this interference) and Shafer based on its 20
12/409,394 (’394) application. The sole count in the ’749 interference was 21
Shafer claim 1 or Omura claim 1. Omura claims 1-18, 33-36, 48, and 49 and 22
Shafer ’394 claims 1-18, 48, and 49 corresponded to the ’749 count. (’749 23
Paper 1 at 4). 24
On 29 June 2011, the Board entered judgment against Omura as to the 25
subject matter of the ’749 count. Omura claims 1-18, 33-36, 48, and 49 were 26
canceled pursuant to 35 U.S.C. § 135(a). (’749 Paper 157). The Board 27
Interference No. 105,834
13
granted Shafer Motion 1, a threshold motion, that Omura’s involved claims 1
were unpatentable under 35 U.S.C. § 112, first paragraph. (’749 Paper 156). 2
The Board’s opinion found that Shafer provided a showing, supported with 3
appropriate evidence, that was not sufficiently rebutted by Omura. (’749 4
Paper 156 at 4). 5
Specifically, the Board found that Shafer satisfied its burden to show 6
that Omura’s specification did not support two limitations found in Omura’s 7
involved independent claims, claim 1 and claim 33. (’749 Paper 156 at 7). 8
First, the Board found that Shafer sufficiently demonstrated, with supporting 9
evidence, that there Omura lacked written description support for the 10
claimed ranges for “COMP1<10, COMP1<11, COMP2<300, 11
COMP3<100.” (’749 Paper 156 at 7). Second, the Board found that Shafer 12
sufficiently demonstrated that Omura’s specification did not support the 13
limitation “a first, refractive objective part” (the “refractive limitation”) 14
(’749 Paper 156 at 7). The Board noted that Omura did not explain in its 15
opposition how the ’870 specification provides written description support 16
for the refractive limitation. (’749 Paper 156 at 8-9). Based on these 17
findings, the Board granted Shafer Motion 1. Omura did not request 18
rehearing or appeal the Board’s entry of judgment against Omura and the 19
deadlines for doing so have passed. (Paper 45, Shafer fact 22; admitted). 20
There is no dispute that in this interference each of Omura’s involved 21
claims includes the refractive limitation. (Paper 45, Shafer fact 24; 22
admitted). Nor is there any dispute that Omura’s claims from the ’870 patent 23
at issue in this interference were excluded from the ’749 interference. (Paper 24
195, Omura fact 43; admitted). Shafer never requested that these claims be 25
added to the ’749 interference. (Paper 195, Omura fact 44; admitted). In 26
Motion 1, Shafer argues that Omura should be precluded by issue preclusion 27
Interference No. 105,834
14
(based either on Board Rule 127(a)(1)—“interference estoppel” or the 1
common law doctrine of issue preclusion) from challenging the Board’s 2
previous determination that Omura’s patent did not provide written 3
description support for the refraction limitation in the present interference. 4
(Paper 20 at 6-7). 5
Shafer has not asserted, or sufficiently demonstrated, that Omura’s 6
presently involved claims are patentably indistinct from the claims in the 7
’749 interference. We therefore assume that Count 1 is patentably distinct 8
from the count in the ’749 interference. “Interference estoppel” does not 9
apply to cases in which the counts are patentably distinct. See Stoudt v. 10
Guggenheim, 651 F.2d 760, 765 (CCPA 1981) (holding that because “the 11
present count is patentably distinct from count 2 of the previous 12
interference” “[n]o identity of issues is therefore present in the two 13
interferences and the doctrine of res judicata is inapplicable.”). See also 14
Woods v. Tsuchiya, 754 F.2d 1571 (Fed. Cir. 1985) (stating that interference 15
estoppel prevents a losing party in a previous interference between the same 16
parties from claiming patentably indistinct subject matter). 17
Moreover, because the ’749 was decided on two alternative bases, 18
each of which would have been sufficient to support the judgment, we 19
decline to apply the common law doctrine of issue preclusion here. See 20
Comair Rotron, Inc. v. Nippon Densan Corp., 49 F.3d 1535, 1538-39 (Fed. 21
Cir. 2006) (holding that because a district court’s judgment of non-22
infringement was based on two alternative grounds, neither ground standing 23
alone was essential to the final judgment). 24
F. Shafer Motion 2 25
Shafer moves for judgment against Omura on the basis that Omura’s 26
involved claims 25-32, 37-39, and 43-47 are unpatentable under 35 U.S.C. 27
Interference No. 105,834
15
§ 112, first paragraph, based on the written description requirement. (Paper 1
60). To be sufficient, a motion must provide a showing, supported with 2
appropriate evidence, such that, if unrebutted, it would justify the relief 3
sought. The burden of proof is on the movant. Br. R. 208(b). For the reasons 4
that follow, Shafer Motion 2 is granted. Shafer provides a showing, 5
supported with appropriate evidence, that is not sufficiently rebutted by 6
Omura Opposition 2. 7
Construction of the claim term “refractive” 8
The parties do not dispute that the involved claims were copied from 9
Shafer’s PCT publication WO 2006/005547 (the “Shafer PCT Application”). 10
(Paper 191, Shafer fact 5; admitted). Thus, for purposes of claim 11
construction the proper context of the interpretation of the claim terms is the 12
specification of the Shafer PCT Application. Agilent Techs., Inc. v. 13
Affymetrix, Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009) (“To be clear, as this 14
court explained in Rowe, when a party challenges written description support 15
for an interference count or the copied claim in an interference, the 16
originating disclosure provides the meaning of the pertinent claim 17
language.”). 18
Shafer argues, inter alia, that the claim limitation “a first, refractive 19
objective part,” which is required by each of the involved claims, is not 20
supported by Omura’s specification.1 Shafer explains, with supporting 21
evidence, that the term “refractive” is conventional nomenclature in the field 22

1 Shafer argues that several other limitations, recited by one or more of the
involved claims, are not supported by Omura’s specification. (Paper 60 at 5-
6). However, because we conclude that Omura’s specification does not
support the claim term “a first, refractive objective part,” a limitation
required by all the involved claims, we do not reach Shafer’s additional
contentions.
Interference No. 105,834
16
of projection objectives and that the term is understood to mean an objective 1
part whose imaging elements are all lenses. (Paper 60 at 7; Ex. 2029 ¶ 16). 2
Shafer argues, with supporting evidence, that a person skilled in the art 3
would understand the term “refractive” in claims 25, 37, 43, and 45 as 4
modifying the first objective part as a whole and therefore all of the imaging 5
elements in the first objective must be lenses. (Paper 60 at 8; Ex. 2029 ¶ 36). 6
Shafer asserts that Shafer’s PCT Application uses the expression “refractive 7
objective part” consistent with this interpretation. (Paper 8-9; Ex. 2029 ¶¶42, 8
44). 9
Specifically, Shafer’s expert, Mr. Juergens, states that one of ordinary 10
skill in the art would interpret the term “refractive,” when describing an 11
optical system, as meaning that all of the image elements in the optical 12
system are lenses. (Ex. 2029, ¶¶ 43-51). To support this statement, Mr. 13
Juergens cites to a treatise that uses the term consistently with this 14
interpretation. (Paper 196 at 4-5; Ex. 2029, ¶ 51 (citing Microlithography 15
Science and Technology 261-268 (James R. Sheats & Bruce W. Smith eds., 16
1998) (“Sheats and Smith Treatise”)). 17
In Opposition, Omura argues that the ordinary meaning of the term 18
“refractive” does not require the absence of mirrors. (Paper 191 at 3). Omura 19
admits that “the term ‘refractive’ in this context has been used to describe 20
objectives which contain only lenses.” (Id.). But, Omura asserts that to a 21
person of ordinary skill in the art, the term “refractive,” by itself, is 22
insufficient to convey the absence of mirrors. (Id. at 4). 23
To support its proposed interpretation of the term “refractive,” Omura 24
argues that 99 patents and published applications, a subset of which list 25
Shafer or Omura as an inventor, and the Shafer PCT Application, all use the 26
terms “purely refractive” or “all refractive” to describe parts that include 27
Interference No. 105,834
17
only refractive elements. (Paper 191 at 4-5; Exs. 1020-1118). According to 1
Omura, if the plain meaning of “refractive” means all lenses, as asserted by 2
Shafer, the terms “purely refractive” and “all refractive” would be 3
unnecessary. (Paper 190 at 4). 4
Omura relies on testimony of its expert, Dr. Ruda, to support this 5
assertion. (Ex. 1019 ¶¶ 9-17). Dr. Ruda concludes that Omura’s position is 6
correct. Id. However, Dr. Ruda fails to provide a sufficient factual basis for 7
that conclusion. See 37 C.F.R. § 41.158(a); Rohm and Haas Co. v. Brotech 8
Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). 9
Mr. Juergens, on the other hand, testifies that persons of ordinary skill 10
in the art interchangeably use the expressions “refractive,” “purely 11
refractive,” and “all-refractive” to mean the same thing. (Ex. 2029 ¶¶ 43-52). 12
Supporting this testimony, the Sheats and Smith Treatise cited to by Mr. 13
Juergens refers to the same lens design as both an “all-refractive lens 14
design” and “a refractive lens design.” (Sheats and Smith Treatise at 263). 15
Omura fails to point to persuasive evidence that contradicts Mr. 16
Juergens’ testimony. While the Shafer PCT Application does refer to certain 17
related art as “purely refractive,” there is no instance where the Shafer PCT 18
Application uses the term “refractive objective part” to indicate an objective 19
part that includes any imaging element other than lenses. See generally, the 20
Shafer PCT Application. (Ex. 2029 ¶¶ 45-51). Further, although Omura 21
submits 99 patents and patent applications that purportedly use the terms 22
“purely refractive” or “all-refractive” objective parts, Omura does not point 23
to any particular language within these documents.2 Moreover, even 24

2 We decline to read through each of these 99 exhibits searching for the
allegedly relevant language. See United States v. Dunkel, 927 F.2d 955, 956
Interference No. 105,834
18
assuming that all 99 patent documents consistently use these terms, Omura 1
does not allege that any of these exhibits use the term “refractive” to refer to 2
an objective part including imaging elements other than lenses. 3
Accordingly, for the foregoing reasons, we conclude that Shafer 4
provides an adequate showing, not sufficiently rebutted by Omura, that the 5
limitation “a first, refractive objective part” is properly interpreted in light of 6
the Shafer PCT Application to mean an objective part where all image 7
elements are lenses. 8
Written description of the limitation “a first, refractive objective part” 9
To satisfy the written description requirement under 35 U.S.C. § 112, 10
first paragraph, the specification must convey with reasonable clarity to 11
those skilled in the art that as of the filing date of the application the inventor 12
was in possession of the claimed invention. Ariad Pharm., Inc. v. Eli Lilly & 13
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). 14
Omura does not dispute that each of the relevant embodiments in the 15
Omura Patent specification describes a first objective part that includes both 16
mirrors and lenses as imaging elements. (Paper 190 at 7). Nor does Omura 17
assert that the Omura Patent provides written description support for “a first, 18
refractive objective part” that requires only lenses as imaging elements. 19
Accordingly, we conclude that Shafer sufficiently demonstrates that the 20
Omura Specification fails to provide written description support for “a first, 21
refractive objective part.” 22
Threshold Issue 23
Shafer argues that its Motion 2 raises a threshold issue and that if 24
granted the motion will deprive Omura of standing to contest Shafer’s right 25

(7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in
briefs.”).
Interference No. 105,834
19
to the subject matter of the count in this interference. (Paper 60 at 24-25). A 1
threshold issue is defined in Br. R. 201 as an “issue that, if resolved in favor 2
of the movant, would deprive the opponent of standing in the interference.” 3
Threshold issues may include unpatentability for lack of written description 4
under 35 U.S.C. § 112, ¶ 1 of an involved application claim where the 5
applicant suggested, or could have suggested, an interference under 6
41.202(a). Bd. R. 202(2)(ii). Omura does not dispute that Shafer Motion 2 is 7
a threshold motion. (See generally Paper 190). 8
Shafer has sufficiently demonstrated that, based on the facts of this 9
case, Shafer Motion 2 raises a threshold issue. During prosecution of its then 10
application, Omura copied claims from a Shafer published PCT application. 11
(Paper 191, Shafer fact 5; admitted). Omura’s involved patent issued before 12
the claims in a Shafer pending application were found allowable. Although 13
Bd. R. 202(2)(ii) is directed to the unpatentability of an involved application 14
claim, we note that the list of “threshold issues” is not exhaustive. Based on 15
the facts of this case, we do not believe that the timing of events renders Bd. 16
R. 202(2)(ii) inapplicable to this case. Therefore, Shafer has sufficiently 17
demonstrated why its motion should be treated as a threshold motion. 18
G. Shafer Motions 3, and 4 19
As discussed above, Shafer Motion 2 is a threshold motion, the 20
granting of which deprives Omura standing to continue in this interference. 21
Accordingly, Shafer Motions 3, and 4 are herein DISMISSED. 22
H. Order 23
It is 24
ORDERED that Omura Motion 1 is DENIED; 25
FURTHER ORDERED that Shafer Motion 1 IS DENIED; 26
FURTHER ORDERED that Shafer Motion 2 is GRANTED; 27
Interference No. 105,834
20
FURTHER ORDERED that Shafer Motions 3 and 4 are 1
DISMISSED. 2

cc (via electronic delivery):
Attorney for Shafer:
Marc M. Wefers, Ph.D., Esq.
Chris C. Bowley, Ph.D., Esq.
FISH & RICHARDSON P.C.
E-mail: wefers@fr.com
E-mail: bowley@fr.com

Oliver R. Ashe, Jr., Esq.
ASHE, P.C.
E-mail: oashe@ashepc.com

Attorney for Omura:
Matthew I. Kreeger, Esq.
Jonathan Bockman, Esq.
MORRISON & FOERSTER LLP
E-mail: mkreeger@mofo.com
E-mail: jbockman@mofo.com