Norman Noble, Inc.v.NUtech Ventures

Patent Trial and Appeal Board

Jun 20, 2013

09035231 (P.T.A.B. Jun. 20, 2013)

Trials@uspto.gov Paper No. 14
571.272.7822 Entered: June 20, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NORMAN NOBLE, INC.
Petitioner

v.

NUTECH VENTURES
Patent Owner
____________

Case IPR2013-00101
Patent 6,489,589 B1
____________

Before SCOTT R. BOALICK, BRIAN J. McNAMARA, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION
Denying Inter Partes Review
37 C.F.R. § 42.108

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Patent 6,489,589

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Norman Noble, Inc. (“Petitioner”) filed a Petition for inter partes
review of claims 5-9, 11, and 12 of U.S. Patent 6,489,589 B1 (the “’589
Patent”) pursuant to 35 U.S.C. § 311. (“Pet.,” Paper 8.
1
) The patent owner
NUTech Ventures (“Patent Owner”) filed a Preliminary Response pursuant to
35 U.S.C. § 313. (“Prelim. Resp.,” Paper 12.) We have jurisdiction under
35 U.S.C. §§ 6(b)(4) and 314.
Institution of inter partes review is authorized by statute when “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.” 35 U.S.C. § 314(a); see also 37 C.F.R.
§ 42.108(c).
On the record before us, there is not a reasonable likelihood that the
Petitioner would prevail with respect to any of the challenged claims of the
’589 Patent. Accordingly, we deny the Petition for inter partes review.
A. Related Proceedings
The parties identify pending litigation concerning the ’589 Patent
brought by Patent Owner and styled NUTech Ventures v. Norman Noble,
Inc., 1:12-cv-2326-CAB (N.D. Ohio filed Sep. 17, 2012). (Pet. 3; Patent
Owner Mandatory Notices 2 (“Mand. Notices,” Paper 6).)
B. The ’589 Patent
The ’589 Patent relates to methods for machining materials using
femtosecond laser pulses. (Ex. 1001, col. 1, ll. 15-18, col. 2, ll. 2-6.)
As pointed out by Petitioner, both (1) the machining of materials and (2) the

1
Our citations to the Petition refer to the Corrected Petition filed January 17,
2013.
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use of femtosecond laser pulses outside of machining were known prior to
the ’589 Patent. (Pet. 7-8, 10). The ’589 Patent concedes as much, stating:
Known to the art are various apparatus and methods for
machining materials. . . .

Femtosecond pulse generating lasers are known to the art.
Lasers of this type are capable of generating pulse lengths
presently as short as 5 femtoseconds (5x10
-15
seconds) with
pulse frequencies presently as high as 10 KHz. Various
methods for utilizing such lasers are also known and described
in the art.

(Col. 1, ll. 21-22, ll. 42-47.)
C. Representative Claim
The ’589 Patent contains twelve claims. Petitioner challenges claims
5-9, 11, and 12. Claims 5, 9, 11, and 12 are independent. Claims 6-8
depend from claim 5.
Each of the independent claims being challenged recites a process for
femtosecond laser machining. In each such process, the independent claim
requires, among other things, that the “femtosecond laser pulses are focused
down to a spot size sufficient to produce material removal with both linear
and non-linear processes.” (’589 Patent claims 5, 9, 11, and 12.)
Independent claim 5 is representative and reads as follows:
5. A process for femtosecond laser machining, comprising:

directing femtosecond laser pulses at a part to be
machined such that material may be selectively removed from
said part to be machined, wherein said femtosecond laser pulses
are focused down to a spot size sufficient to produce material
removal with both linear and non-linear processes, wherein
said femtosecond pulses are generated at a rate less than the rate
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that would damage surrounding material; and wherein the part
comprises a metal.

(’589 Patent col. 12, ll. 15-26 (emphasis added).)

D. Prior Art Relied Upon
The ’589 Patent issued from a divisional application filed May 5,
1998, of a parent application filed February 7, 1994. (’589 Patent cover.)
Petitioner relies on the following items of asserted prior art:
Ex. 1002 U.S. Patent No. 4,114,018 to Von Allmen et al., iss. Sep. 12,
1978 (“Von Allmen”)
Ex. 1003 U.S. Patent No. 5,208,437 to Miyauchi et al., iss. May 4, 1993
(“Miyauchi”)
Ex. 1004 Rolf Bütje, “Excimer laser processing of metals considering the
effects of pulse duration and geometrical aspects,” SPIE Vol.
1225 High Power Gas Lasers 196-203 (1990) (“Bütje”)
Ex. 1005 P.B. Corkum, F. Brunel, and N.K. Sherman, “Thermal
Response of Metals to Ultrashort-Pulse Laser Excitation,” 61,
No. 25 Physical Review Letters 2886-89 (Dec. 1988)
(“Corkum”)
Ex. 1006 F. Müller, K. Mann, and P. Simon, “A Comparative Study of
Deposition of Thin Films by Laser Induced PVD with
Femtosecond and Nanosecond Laser Pulses,” 1858 SPIE 464-
475 (1993) (“Müller”)
Ex. 1007 B. Luther-Davies, E.G. Gamalii, Y. Wang, A.V. Rode, and V.T.
Tikhonchuk, “Matter in ultrastrong laser fields,” Sov. J. 22 (4)
Quantum Electron 289-325 (April 1992) (“Luther-Davies”)

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E. The Proposed Grounds For Review
Petitioner asserts that claims 5-8 and 12 are anticipated by Luther-
Davies. (Pet. 4.)
Additionally, Petitioner asserts that all of the challenged claims are
obvious over Von Allmen in view of one or more additional references as
follows:
claims 5-8 as obvious over Von Allmen and Miyauchi;
claims 5-8 as obvious over Von Allmen and Bütje;
claims 5-8 as obvious over Von Allmen and Corkum;
claims 5-8 and 12 as obvious over Von Allmen, Miyauchi, and
Luther-Davies;
claims 5-8 and 12 as obvious over Von Allmen, Bütje, and Luther-
Davies;
claims 5-8 and 12 as obvious over Von Allmen, Corkum, and Luther-
Davies; and
claims 9 and 11 as obvious over Von Allmen, Müller, and Luther-
Davies. (Pet. 4-6.)

ANALYSIS
A. Claim Construction
In an inter partes review, “[a] claim in an unexpired patent shall be
given its broadest reasonable construction in light of the specification of the
patent in which it appears.” 37 C.F.R. § 42.100(b). We generally give claim
terms their ordinary and customary meaning as would be understood by one
of ordinary skill in the art. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13
(Fed. Cir. 2005) (en banc).
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In some cases, the ordinary meaning of claim language as understood
by a person of skill in the art may be readily apparent, and claim
construction in such cases involves little more than the application of the
widely accepted meaning of commonly understood words. Phillips, 415
F.3d at 1314. In other cases, however, the meaning of a claim term is not
immediately apparent from the intrinsic record alone, and construction in
those cases is aided by extrinsic evidence concerning relevant scientific
principles, the meaning of technical terms, and the state of the art. Id.
As explained below, certain claim terms in this proceeding (i.e., linear
and non-linear processes) are not readily apparent from the intrinsic record
alone, and Petitioner does not provide adequate extrinsic evidence to
determine their meaning as would be understood by persons of ordinary skill
in the art. Petitioner’s failure to provide adequate evidence to support
construction of the challenged claims is fatal to its request for inter partes
review.
1. “material removal with both linear and non-linear processes”
Each of the independent claims being challenged recites that the
femtosecond laser pulses be “focused down to a spot size sufficient to
produce material removal with both linear and non-linear processes”
(emphasis added). (’589 Patent claims 5, 9, 11, and 12.) Petitioner proposes
two alternative constructions for this limitation. (Pet. 22-24.)
In support of its primary proposed construction, Petitioner points to
the prosecution history of the ’589 Patent, during which tH12F1E4DDEEhe
Examiner stated:
Applicant’s language in claim 1 that “. . . material removal with
both linear and non-linear processes” is merely a description of
the physical process that occurs with a focused femtosecond
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beam. Any process must inherently be either linear or non-
linear.

(Office action mailed May 21, 2001, Ex. 1008 p. 191; Pet. 22-23.) Based on
this Examiner statement, Petitioner concludes that the “focused down to a
spot size sufficient to produce material removal with both linear and non-
linear processes” limitation “is synonymous with the limitation of
‘femtosecond laser pulses’ and does not further narrow the claims.”
(Pet. 23.)
Patent Owner responds that we should not construe the claim based on
the Examiner statement because Petitioner has not shown acquiescence by
Patent Owner with the statement. (Prelim. Resp. 15.) We agree with Patent
Owner.
The Federal Circuit has held the following:
The words of a claim are generally given their ordinary and
customary meaning as understood by a person of ordinary skill
in the art when read in the context of the specification and
prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303,
1313 (Fed. Cir. 2005) (en banc). There are only two exceptions
to this general rule: 1) when a patentee sets out a definition and
acts as his own lexicographer, or 2) when the patentee disavows
the full scope of a claim term either in the specification or
during prosecution. Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1580 (Fed. Cir. 1996).

Thorner v. Sony Computer Enter. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012). And, with regard to the latter exception, the Federal Circuit also has
held that the Examiner cannot unilaterally disavow claim scope. Salazar v.
Procter & Gamble Co., 414 F. 3d 1342, 1345 (Fed. Cir. 2005) (“an
applicant’s silence regarding statements made by the examiner during
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prosecution, without more, cannot amount to a ‘clear and unmistakable
disavowal’”).
Petitioner alternatively proposes that the limitation “focused down to
a spot size sufficient to produce material removal with both linear and non-
linear processes” means any spot size such that the intensity is at least 10
12

W/cm
2
. (Pet. 23-24.) In support of this alternative construction, Petitioner’s
argument begins with an intensity of 10
18
W/cm
2
, citing to an example from
the ’589 specification. (Pet. 23.) In an embodiment, the ’589 Patent
associates such an intensity with linear and non-linear processes, stating:
For example, if a 50 mJ, 150 fs pulse is focused down to a 3 µm
spot the intensity is about 10
18
W/cm
2
. . . Material subjected to
these electric field strengths are ionized by both linear and
nonlinear processes.

(’589 Patent col. 9, ll. 34-38; Pet. 23.)
Petitioner then, and without sufficient explanation, proposes reducing
the intensity by a factor of 10
3
stating: “Assuming that the spot size is also 3
μm, then the intensity is calculated to be on the order of 10
15
W/cm
2
.” (Pet.
23.) Petitioner does not identify the actual calculation that it purportedly
made. Petitioner also fails to explain adequately why the unknown
calculation was made.
Finally, Petitioner proposes to further reduce the intensity by yet
another factor of 10
3
, stating that the prior art “teaches a laser intensity of
10
12
W/cm
2
is sufficient to induce nonlinear processes (Luther-Davies, pg.
310, col. 2, ¶ 3).” (Pet. 23.) But, yet again Petitioner does not explain
adequately how this evidence affects the construction of the limitation at
issue. Although the cited evidence may be probative of a non-linear process
occurring in Luther-Davies under the circumstances stated therein (including
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an intensity of just 10
12
W/cm
2
), it is not probative of what “material
removal with both linear and non-linear processes” means.
As the Petitioner has not shown that the limitation “focused down to a
spot size sufficient to produce material removal with both linear and non-
linear processes” was defined in the specification or subject to disavowal,
the limitation should be given its ordinary and customary meaning as
understood by a person of ordinary skill in the art when read in the context
of the specification and prosecution history. See Phillips, 415 F.3d at 1313.
The present record, however, lacks adequate evidence of what a person of
ordinary skill in the art would have understood “material removal with both
linear and non-linear processes” to mean. For example, Petitioner has not
offered expert testimony or other probative evidence regarding what
“material removal with both linear and non-linear processes” would mean to
such a person of ordinary skill.
The closest Petitioner comes to providing meaning to “material
removal with both linear and non-linear processes” is by providing
purported examples of linear and non-linear processes with the following
statement:
Von Allmen then teaches that such heat induced damage can be
eliminated by melting the metal at the point of impingement (a
linear process) and then the constant vaporization and ejection
of the molten material (a nonlinear process). (2:66-3:1).

(Pet. 31 (emphasis added).) But, Von Allmen does not include an express
teaching directed to the parenthetical matters regarding linear and non-linear
processes. (Von Allmen col. 2, l. 66 – col 3, l. 1.) Hence, the assertion that
Von Allmen describes examples of linear and non-linear processes is
unsubstantiated attorney argument.
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Patent Owner also does not define “material removal with both linear
and non-linear processes” in its Preliminary Response. It merely states the
claim terms carry their ordinary and customary meaning. (Prelim. Resp. 17.)
The ordinary and customary meaning of “material removal with both linear
and non-linear processes,” however, is not evident based on the present
record.
B. Application of Asserted Prior Art to the Claims
A petitioner has the burden of proof to establish that it is entitled to
the requested relief. 37 C.F.R. § 42.20(c). The petition “must specify where
each element of the claim is found in the prior art patents or printed
publications relied upon;” and it “must include . . . a detailed explanation of
the significance of the evidence including material facts[.]” 37 C.F.R.
§ 42.104(b)(4); 37 C.F.R. § 42.22(a). “The Board may exclude or give no
weight to the evidence where a party has failed to state its relevance or to
identify specific portions of the evidence that support the challenge.” 37
C.F.R. § 42.104(b)(5).
As explained in further detail below, the Petition identifies prior art
teachings that do not appear to disclose the limitation that Petitioner asserts
they disclose. Further, the Petition lacks sufficient evidence, for example, in
the form of testimony or other probative evidence, regarding what the
asserted teachings would have meant to a person of ordinary skill in the art
and how they relate to the claim limitations against which they are offered.
See 77 Fed. Reg. 48763 (“The Board expects that most petitions and motions
will rely on affidavits of experts.”)
We now discuss the specific grounds of review proposed by
Petitioner.
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1. Claims 5-8 and 12 as anticipated by Luther-Davies
Anticipation requires that “each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). Also, as pointed out by Patent Owner, anticipation
requires that the anticipatory reference disclose those elements “arranged as
in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
(Fed. Cir. 2008); (Prelim. Resp. 25).
Claims 5-8 and 12 require that the “femtosecond laser pulses are
focused down to a spot size sufficient to produce material removal with both
linear and non-linear processes.” To establish disclosure of this limitation,
Petitioner identifies three excerpts from Luther-Davies, as follows:
The use of short-focus optics has made it possible to reach
energy densities in excess of 10
19
W/cm
2
on the target surface.
[Luther-Davies, pg. 289, col. 1, ¶ 1].

The interaction of laser radiation of this intensity [3.4 x 10
16

W/cm
2
] with a medium results in the ionization of matter by the
field in question and creation of ions with a high multiplicity.
[Luther-Davies, pg. 289, col. 2, ¶ 3].

Already in the range of intensity greater than 10
12
W/cm
2
the
additional of ionization of the atoms and the heating of the
resultant electrons have a considerable influence on the process
of absorption of laser energy, which becomes strongly
nonlinear. [Luther-Davies, pg. 310, col. 2, ¶ 3].

(Pet. 26-27 (brackets in original).)
As set forth above, it is not apparent what linear and non-linear
processes mean to a person of ordinary skill in the art. Thus, it is not
apparent how any of the cited excerpts disclose that the “femtosecond laser
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pulses are focused down to a spot size sufficient to produce material removal
with both linear and non-linear processes,” as required by independent
claims 5 and 12.
Although the third excerpt refers to a “process of absorption of laser
energy” that “becomes strongly nonlinear,” it is not apparent whether
material removal with a non-linear process is occurring. Also, Petitioner has
not shown that any of the excerpts discloses material removal with a linear
process. Likewise, Petitioner has not shown that any of the excerpts
discloses focusing the femtosecond laser pulses “down to a spot size
sufficient to produce material removal with both linear and non-linear
processes,” as required by the claims. For the foregoing reasons, we are not
persuaded that Luther-Davies discloses the claimed limitation.
Accordingly, there is not a reasonable likelihood that the Petitioner
would prevail with respect to claims 5-8 and 12 being anticipated by Luther-
Davies.
2. Claims 5-8 as obvious over Von Allmen and Miyauchi
Petitioner cites excerpts from both Von Allmen and Miyauchi as
disclosing “material removal with both linear and non-linear processes.”
(Pet. 33-34.) None of the cited teachings, however, expressly discusses this
limitation. And, as set forth above, the meaning of that limitation to a
person of ordinary skill in the art is not evident based on the present record.
Thus, Petitioner has not presented persuasive evidence that what is taught in
Von Allmen and/or Miyauchi constitutes or renders obvious material
removal with both linear and non-linear processes.
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Accordingly, there is not a reasonable likelihood that the Petitioner
would prevail with respect to claims 5-8 being obvious over Von Allmen
and Miyauchi.
3. Claims 5-8 as obvious over Von Allmen and Bütje
Having already determined that Von Allmen does not disclose
“material removal with both linear and non-linear processes,” we turn our
attention to Bütje.
Petitioner asserts that Bütje discloses this limitation but none of the
passages it quotes from Bütje expressly discusses material removal with
both linear and non-linear processes. (Pet. 38.) Further, as the meaning of
the limitation is not evident based on the present record, it is not apparent
that Bütje, whether alone or in conjunction with Von Allmen, discloses or
renders obvious the limitation.
For instance, Petitioner notes that Bütje states that “[w]ith shortest
pulse durations at high intensities the thermal input during the removal
process is minimized” but does not explain the significance of the statement.
(Pet. 38 (quoting Bütje p. 203).) In particular, Petitioner does not explain
the relationship, if any, that thermal input minimization bears on material
removal with both linear and non-linear processes. See 37 C.F.R. § 42.22(a)
(requiring “a detailed explanation of the significance of the evidence
including material facts”).
Accordingly, there is not a reasonable likelihood that the Petitioner
would prevail with respect to claims 5-8 being obvious over Von Allmen
and Bütje.
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4. Claims 5-8 as obvious over Von Allmen and Corkum
Having already determined that Von Allmen does not disclose
“material removal with both linear and non-linear processes,” we turn our
attention to Corkum.
Petitioner asserts that Corkum discloses this limitation but none of the
material Petitoner cites from Corkum expressly discusses material removal
with both linear and non-linear processes. (Pet. 41-42.) Further, as the
meaning of the limitation is not evident based on the present record, it is not
apparent that Corkum, whether alone or in conjunction with Von Allmen,
discloses or renders obvious the limitation.
For instance, Petitioner asserts that Corkum teaches that “[f]or a pulse
duration t < τR heat will diffuse without being absorbed by the lattice” and
“[t]ransport will dominate for t < 400 femtoseconds” but does not explain
the significance of such teachings. (Pet. 41-42 (citing Corkum pp. 2886,
2889).) In particular, Petitioner does not explain how such teachings
implicitly disclose or render obvious material removal with both linear and
non-linear processes. See 37 C.F.R. § 42.22(a).
Accordingly, there is not a reasonable likelihood that the Petitioner
would prevail with respect to claims 5-8 being obvious over Von Allmen
and Corkum.
5. Claims 9 and 11 as obvious over Von Allmen, Müller, and Luther-
Davies
Like independent claims 5 and 12, independent claims 9 and 11,
require “material removal with both linear and non-linear processes.”
Having already determined that Von Allmen and Luther-Davies do not
disclose this limitation, we turn our attention to Müller.
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Petitioner asserts that Müller discloses this limitation but does not cite
any express teaching by Müller of material removal with both linear and
non-linear processes. (Pet. 56.) Further, as the meaning of the limitation is
not evident based on the present record, it is not apparent that Müller,
whether alone or in conjunction with Von Allmen and/or Luther-Davies,
discloses or renders obvious the limitation.
For instance, Petitioner asserts that Müller “teaches a 500 fs pulse of
about 6 x 10
13
W/cm
2
yielding ionization of diamond-like material (non-
linear process).” (Pet. 56 (citing Müller p. 467, ¶ 4).) But, Müller does not
include an express teaching directed to the parenthetical matter regarding the
asserted non-linear process (Müller p. 467, ¶ 4). Petitioner’s assertion that
ionization of diamond-like material is a non-linear process is unsubstantiated
attorney argument. Further, Petitioner does not identify any purported
disclosure of material removal with a linear process, which the claims also
require.
Accordingly, there is not a reasonable likelihood that the Petitioner
would prevail with respect to claims 9 and 11 being obvious over Von
Allmen, Müller, and Luther-Davies.
6. Remaining Proposed Grounds of Review
Each of the remaining proposed grounds of review critically relies on
the unpersuasive arguments and evidence already discussed above. Thus,
there is not a reasonable likelihood that the Petitioner would prevail with
respect to the additional grounds.

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CONCLUSION
The information presented in the Petition and the Preliminary
Response does not show that there is a reasonable likelihood that Petitioner
would prevail with respect to any of the challenged claims. Accordingly, we
do not institute inter partes review of Patent No. 6,489,589. 35 U.S.C.
§ 314(a); see also 37 C.F.R. § 42.108(c).

ORDER
For the forgoing reasons, the Petition is denied.

PETITIONER:
Thomas B. Haverstock
Chris Kao
Haverstock & Ownes, LLP
Email: tom@hollp.com
Email: ckao@hollp.com

PATENT OWNER:
Robert Greene Sterne
Jason D. Eisenberg
Sterne, Kessler, Goldstein & Fox, PLLC
Email: rsterne-PTAB@skgf.com
Email: jasone-PTAB@skgf.com