Carl Zeiss SMT GmbH v. Nikon Corp.

The Patent Trial and Appeal Board (PTAB or Board) has explained that arguing a high-level of skill in a narrow art, even in cases involving complex technology, will not exclude an expert who has expertise within the scope of the claimed invention.  Carl Zeiss SMT GmbH v. Nikon Corp., IPR 2013-00362 (PTAB, Nov. 14, 2014) (Clements, APJ).

After Carl Zeiss filed a petition requesting inter partes review, the Board granted review all challenged claims. After institution, the patent owner, Nikon, filed a Motion to Exclude Evidence contending that “[b]ecause of the highly specialized nature of projection optical systems,” the level of ordinary skill in the art would have required at least two years of experience in the lithography optics industry and experience in the specification of projection optical systems. Nikon further contended that Carl Zeiss’expert, Mr. Juergens, whose CV included a master degree in optical systems, was not an expert in the relevant field because he did not have the experience required to be a person of even ordinary skill in the lithography art and moved to exclude his expert testimony.  Carl Zeiss countered that Nikon’s expert, Dr. Jose Sasian, regularly invites Mr. Juergens to guest lecture Dr. Sasian’s class on lens design and that Dr. Sasian conceded that Mr. Juergens is an expert on many aspects of optical design.

In its final written decision, the Board determined that Mr. Juergens was qualified as a person of ordinary skill in the art.  Particularly, the Board was not persuaded that the level of ordinary skill in the art required at least two years of experience in lithography optics in addition to experience in projection optical systems, explaining that the claims were not limited to the field of lithography, but more broadly to projection optical systems. Based on Mr. Juergens 40 years of experience in the field of optical system design, the Board determined that he was of at least ordinary skill in the art in the art of projection optical systems.

Practice Note:  With regard to expert declarations, while a Daubert challenge to an expert might be used tactically to “educate” a panel—it is not likely to result in an exclusion remedy.