Case IPR2014-00103
`Patent No. 6,369,416
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MACRONIX INTERNATIONAL CO., LTD., MACRONIX ASIA
`LIMITED, MACRONIX (HONG KONG) CO., LTD. and MACRONIX
`AMERICA, INC.
`Petitioners
`
`
`
`v.
`
`SPANSION LLC
`Patent Owner
`
`
`
`Case : IPR2014-00103
`U.S. Patent 6,369,416 B1
`
`Before the Honorable DEBRA K. STEPHENS, JUSTIN T. ARBES, and,
`RICHARD E. RICE, Administrative Patent Judges.
`
`PETITIONERS’ FIRST SET OF OBJECTIONS TO PATENT OWNERS’
`EXHIBITS
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of and acting
`
`in a representative capacity for Petitioners Macronix International Co., Ltd.,
`
`Macronix Asia Limited, Macronix (Hong Kong) Co., Ltd. And Macronix America,
`
`Inc. (“Petitioners”), hereby submit the following objections to Patent Owner
`
`Spansion LLC’s (“Patent Owner”) Exhibit EX2003, Exhibit EX2006, Exhibit
`
`NY:1644238.1
`
`1
`
`Spansion Exhibit 2008
`Macronix et al v. Spansion
`IPR2014-00108
`Page 00001
`
`
`Patent No. 6,369,416
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MACRONIX INTERNATIONAL CO., LTD., MACRONIX ASIA
`LIMITED, MACRONIX (HONG KONG) CO., LTD. and MACRONIX
`AMERICA, INC.
`Petitioners
`
`
`
`v.
`
`SPANSION LLC
`Patent Owner
`
`
`
`Case : IPR2014-00103
`U.S. Patent 6,369,416 B1
`
`Before the Honorable DEBRA K. STEPHENS, JUSTIN T. ARBES, and,
`RICHARD E. RICE, Administrative Patent Judges.
`
`PETITIONERS’ FIRST SET OF OBJECTIONS TO PATENT OWNERS’
`EXHIBITS
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of and acting
`
`in a representative capacity for Petitioners Macronix International Co., Ltd.,
`
`Macronix Asia Limited, Macronix (Hong Kong) Co., Ltd. And Macronix America,
`
`Inc. (“Petitioners”), hereby submit the following objections to Patent Owner
`
`Spansion LLC’s (“Patent Owner”) Exhibit EX2003, Exhibit EX2006, Exhibit
`
`NY:1644238.1
`
`1
`
`Spansion Exhibit 2008
`Macronix et al v. Spansion
`IPR2014-00108
`Page 00001
`
`
`
`Case IPR2014-00103
`Patent No. 6,369,416
`
`EX2010, Exhibit EX2011, Exhibit EX2012, Exhibit EX2013, Exhibit EX2015 and
`
`any reference to/reliance on the foregoing. As required by 37 C.F.R § 42.62,
`
`Petitioners’ objections below apply the Federal Rules of Evidence (“F.R.E.”).
`
`I. Objections to Exhibit EX2003 and Any Reference to/Reliance Thereon
`
`Evidence objected to: Exhibit EX2003, titled “Declaration of Shukri Souri,
`
`Ph.D,” including at least ¶¶ 20-127.
`
`Grounds for objection: F.R.E. 702 (“Testimony by Expert Witnesses”);
`
`F.R.E. 403 (“Excluding Relevant Evidence for Prejudice, Confusion, Waste of
`
`Time, or Other Reasons”).
`
`The witness providing the declaration attached as Exhibit EX2003 provides
`
`insufficient underlying facts or data upon which the opinions contained in Exhibit
`
`EX2003 could legitimately be based, in violation of F.R.E. 702. Accordingly,
`
`permitting any reliance on this purported expert testimony in the Petition or other
`
`submissions of Petitioners would be misleading and unfairly prejudicial to Patent
`
`Owner (F.R.E. 403).
`
`II. Objections to Exhibit EX2006 and Any Reference to/Reliance Thereon
`
`Evidence objected to: Exhibit EX2006, and any reference to or reliance
`
`thereon.
`
`NY:1644238.1
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`2
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`Page 00002
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`Case IPR2014-00103
`Patent No. 6,369,416
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`Grounds for objection: F.R.E. 106 (“Remainder of or Related Writings or
`
`Recorded Statements”); F.R.E. 901 (“Authenticating or Identifying Evidence”);
`
`F.R.E. 403 (“Excluding Relevant Evidence for Prejudice, Confusion, Waste of
`
`Time, or Other Reasons”).
`
`While Petitioners attach a purported “Excerpt of Stephen A. Campbell, The
`
`Science and Engineering of Microelectronic Fabrication, (Oxford University Press,
`
`Oxford New York, 1996)” as EX2006, Petitioners’ citations to that Exhibit in
`
`Patent Owner’s Response (on pages 6-7, 27, 50 and 60 and) and in the Declaration
`
`of Shukri Souri (in ¶¶ 28-29, 58, 102 and 126 ) omit citations to portions “that in
`
`fairness ought to be considered at the same time” (F.R.E. 106; see also Fed. R. Civ.
`
`P. 32(a)(6)).
`
`Furthermore, Patent Owner fails to provide for Exhibit EX2006 the
`
`authentication required by F.R.E. 901. While Patent Owner’s exhibit list refers to
`
`Exhibit EX2006 as “Excerpt of Stephen A. Campbell, The Science and
`
`Engineering of Microelectronic Fabrication, (Oxford University Press, Oxford
`
`New York, 1996),” Patent Owner has not presented sufficient evidence concerning
`
`the origin of this document or confirming that it is what it is labeled to be. Patent
`
`Owner thus improperly cite to Exhibit EX2006 without providing the proper
`
`authenticating evidence sufficient to support a finding that the item is what Patent
`
`Owner claim it is, in violation of F.R.E. 901.
`
`NY:1644238.1
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`3
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`Page 00003
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`Case IPR2014-00103
`Patent No. 6,369,416
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`In addition, to the extent the Patent Owner’s Response or the Declaration of
`
`Shukri Souri, or any other submission of Patent Owner purports to refer to or rely
`
`on Exhibit EX2006, Petitioners object to such reference to/reliance on evidence
`
`that is not properly authenticated (F.R.E. 901) and/or omit citations to portions
`
`“that in fairness ought to be considered at the same time” (F.R.E. 106), and as
`
`misleading and unfairly prejudicial (F.R.E. 403).
`
`III. Objections to Exhibit EX2006 and Any Reference to/Reliance Thereon
`
`Evidence objected to: Exhibit EX2006, and any reference to or reliance
`
`thereon.
`
`Grounds for objection: F.R.E. 106 (“Remainder of or Related Writings or
`
`Recorded Statements”); F.R.E. 901 (“Authenticating or Identifying Evidence”);
`
`F.R.E. 403 (“Excluding Relevant Evidence for Prejudice, Confusion, Waste of
`
`Time, or Other Reasons”).
`
`While Patent Owner attaches a purported “Excerpt of Stephen A. Campbell,
`
`The Science and Engineering of Microelectronic Fabrication, (Oxford University
`
`Press, Oxford New York, 1996)” as EX2006, Patent Owner’s citations to that
`
`Exhibit in Patent Owner’s Response (on pages 6-7, 27, 50 and 60) and in the
`
`Declaration of Shukri Souri (in ¶¶ 28-29, 58, 102 and 126) omit citations to
`
`NY:1644238.1
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`4
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`Page 00004
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`Case IPR2014-00103
`Patent No. 6,369,416
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`portions “that in fairness ought to be considered at the same time” (F.R.E. 106; see
`
`also Fed. R. Civ. P. 32(a)(6)).
`
`Furthermore, Patent Owner fails to provide the authentication for Exhibit
`
`EX2006 required by F.R.E. 901. While Patent Owner’s exhibit list refers to
`
`Exhibit EX2006 as “Excerpt of Stephen A. Campbell, The Science and
`
`Engineering of Microelectronic Fabrication, (Oxford University Press, Oxford
`
`New York, 1996),” Patent Owner has not presented sufficient evidence concerning
`
`the origin of this document or confirming that it is what it is labeled to be. Patent
`
`Owner thus improperly cites to Exhibit EX2006 without providing the proper
`
`authenticating evidence sufficient to support a finding that the item is what Patent
`
`Owner claim it is, in violation of F.R.E. 901.
`
`In addition, to the extent the Patent Owner’s Response or the Declaration of
`
`Shukri Souri, or any other submission of Patent Owner purports to refer to or rely
`
`on Exhibit EX2006, Petitioners object to such reference to/reliance on evidence
`
`that is not properly authenticated (F.R.E. 901) and/or omit citations to portions
`
`“that in fairness ought to be considered at the same time” (F.R.E. 106), and as
`
`misleading and unfairly prejudicial (F.R.E. 403).
`
`IV. Objections to Exhibit EX2010 and Any Reference to/Reliance Thereon
`
`NY:1644238.1
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`5
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`Page 00005
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`
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`Case IPR2014-00103
`Patent No. 6,369,416
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`Evidence objected to: Exhibit EX2010, and any reference to or reliance
`
`thereon.
`
`Grounds for objection: F.R.E. 106 (“Remainder of or Related Writings or
`
`Recorded Statements”); F.R.E. 901 (“Authenticating or Identifying Evidence”);
`
`F.R.E. 403 (“Excluding Relevant Evidence for Prejudice, Confusion, Waste of
`
`Time, or Other Reasons”).
`
`While Patent Owner attaches a purported “Ginami, et al., “Survey on flash
`
`technology with specific attention to critical process parameters related to
`
`manufacturing,” Proc. IEEE, 2003, Vol. 91, No. 4” as EX2010, Patent Owner’s
`
`citations to that Exhibit in Patent Owner’s Response (on page 57) and in the
`
`Declaration of Shukri Souri (in ¶ 123) omit citations to portions “that in fairness
`
`ought to be considered at the same time” (F.R.E. 106; see also Fed. R. Civ. P.
`
`32(a)(6)).
`
`Furthermore, Patent Owner fails to provide the authentication for Exhibit
`
`EX2010 required by F.R.E. 901. While Patent Owner’s exhibit list refers to
`
`Exhibit EX2010 as “Ginami, et al., “Survey on flash technology with specific
`
`attention to critical process parameters related to manufacturing,” Proc. IEEE,
`
`2003, Vol. 91, No. 4,” Patent Owner has not presented sufficient evidence
`
`concerning the origin of this document or confirming that it is what it is labeled to
`
`be. Patent Owner thus improperly cites to Exhibit EX2010 without providing the
`
`NY:1644238.1
`
`6
`
`Page 00006
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`
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`Case IPR2014-00103
`Patent No. 6,369,416
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`proper authenticating evidence sufficient to support a finding that the item is what
`
`Patent Owner claim it is, in violation of F.R.E. 901.
`
`In addition, to the extent the Patent Owner’s Response or the Declaration of
`
`Shukri Souri, or any other submission of Patent Owner purports to refer to or rely
`
`on Exhibit EX2010, Petitioners object to such reference to/reliance on evidence
`
`that is not properly authenticated (F.R.E. 901) and/or omit citations to portions
`
`“that in fairness ought to be considered at the same time” (F.R.E. 106), and as
`
`misleading and unfairly prejudicial (F.R.E. 403).
`
`V. Objections to Exhibit EX2011
`
`Evidence objected to: Exhibit EX2011.
`
`Grounds for objection: F.R.E. 401 (“Test for Relevant Evidence”).
`
`While Patent Owner attaches a copy of U.S. Patent No. 5,739,563 as Exhibit
`
`EX2011, neither Patent Owner’s Response nor the Declaration of Shukri Souri
`
`make any reference to this exhibit.
`
`Since neither Patent Owner nor Dr. Souri even attempt to establish any facts
`
`(F.R.E. 401(a)), let alone consequential facts (F.R.E. 401(b)) using EX2011,
`
`inclusion of this exhibit in the record is in violation of F.R.E. 401.
`
`VI. Objections to Exhibit EX2012
`
`Evidence objected to: Exhibit EX2012.
`
`NY:1644238.1
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`7
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`Page 00007
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`Case IPR2014-00103
`Patent No. 6,369,416
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`Grounds for objection: F.R.E. 401 (“Test for Relevant Evidence”).
`
`While Patent Owner attaches a copy of U.S. Patent No. 6,171,970 as Exhibit
`
`EX2012, neither Patent Owner’s Response nor the Declaration of Shukri Souri
`
`make any reference to this exhibit.
`
`Since neither Patent Owner nor Dr. Souri even attempt to establish any facts
`
`(F.R.E. 401(a)), let alone consequential facts (F.R.E. 401(b)) using EX2011,
`
`inclusion of this exhibit in the record is in violation of F.R.E. 401.
`
`VII. Objections to Exhibit EX2013
`
`Evidence objected to: Exhibit EX2013.
`
`Grounds for objection: F.R.E. 401 (“Test for Relevant Evidence”).
`
`While Patent Owner attaches a copy of U.S. Patent No. 6,177,351 as Exhibit
`
`EX2013, neither Patent Owner’s Response nor the Declaration of Shukri Souri
`
`make any reference to this exhibit.
`
`Since neither Patent Owner nor Dr. Souri even attempt to establish any facts
`
`(F.R.E. 401(a)), let alone consequential facts (F.R.E. 401(b)) using EX2011,
`
`inclusion of this exhibit in the record is in violation of F.R.E. 401.
`
`VIII. Objections to Exhibit EX2015
`
`Evidence objected to: Exhibit EX2015.
`
`Grounds for objection: F.R.E. 401 (“Test for Relevant Evidence”).
`
`NY:1644238.1
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`8
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`Page 00008
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`Case IPR2014-00103
`Patent No. 6,369,416
`
`While Patent Owner attaches a copy of “Annotated version of MX416-1007
`
`from Deposition of Chris Mack, Ph.D. (July 18, 2014) (referred to as “EX2000” at
`
`deposition and in EX2003, Souri Decl.)” as Exhibit EX2015, neither Patent
`
`Owner’s Response nor the Declaration of Shukri Souri make any reference to this
`
`exhibit.
`
`Since neither Patent Owner nor Dr. Souri even attempt to establish any facts
`
`(F.R.E. 401(a)), let alone consequential facts (F.R.E. 401(b)) using EX2011,
`
`inclusion of this exhibit in the record is in violation of F.R.E. 401.
`
`Dated: August 5, 2014
`
`Respectfully submitted,
`
`/Michael M. Murray/
`Michael M. Murray, Reg. No. 32,537
`
`Counsel for Petitioners
`
`
`
`NY:1644238.1
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`9
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`Page 00009
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`IPR2014-00103
`USP 6,369,416
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`§ 42.6(e)—CERTIFICATION OF SERVICE
`
`In accordance with § 42.6(e)(1), the undersigned certifies that on the 5th
`
`day of August, 2014, the above PETITIONERS’ FIRST SET OF
`
`OBJECTIONS TO PATENT OWNERS’ EXHIBITS was served, via
`
`electronic mail upon the following counsel for Patent Owner SPANSION LLC,
`
`J. Steven Baughman, Esq.
`Gabrielle E. Higgins, Esq.
`Ropes & Gray LLP
`One Metro Center
`700 12th Street, NW - Suite 900
`Washington, DC 20005-3948
`steven.baughman@ropesgray.com
`gabrielle.higgins@ropesgray.com
`SpansionPTABService@ropesgray.com
`Counsel for Spansion LLC
`
`
`
`Dated: August 5, 2014
`
`
`
` / Deomattie Kumar /
`Deomattie Kumar
`
`
`
`PARALEGAL FOR PETITIONERS
`
`NY:1644238.1
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`10
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`Page 00010
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