Motion For Supplemental Information
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`IPR2014-01030
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`(TSMC),
`Petitioner
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`v.
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`DSS TECHNOLOGY MANAGEMENT, INC.
`Patent Owner
`___________________
`
`Patent 5,652,084
`IPR2014-01030
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`Title: METHOD FOR REDUCED PITCH LITHOGRAPHY
`_____________________
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`MOTION FOR SUPPLEMENTAL INFORMATION
` UNDER 37 CFR § 42.123
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`–1–
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`IPR2014-01030
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`(TSMC),
`Petitioner
`
`v.
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`DSS TECHNOLOGY MANAGEMENT, INC.
`Patent Owner
`___________________
`
`Patent 5,652,084
`IPR2014-01030
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`Title: METHOD FOR REDUCED PITCH LITHOGRAPHY
`_____________________
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`MOTION FOR SUPPLEMENTAL INFORMATION
` UNDER 37 CFR § 42.123
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`Motion For Supplemental Information
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`IPR2014-01030
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`1.
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`Petitioner Taiwan Semiconductor Manufacturing Company
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`(“TSMC”) hereby motions to submit supplemental information in IPR2014-01030
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`pursuant to 37 CFR § 42.123(a). On a conference call between the parties dated
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`Monday, February 02, 2015, the PTAB panel provided authorization for TSMC to
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`file this motion. Furthermore it is noted that Patent Owner’s representative Mr.
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`Lyvtvyn, who was on the conference call, indicated that he did not oppose the
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`filing of this motion. The present motion seeks to submit Exhibit TSMC-1012,
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`included herewith.
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`I.
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`The Present Motion Complies with the Rules
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`2.
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`The present motion complies with the requirements of 37 CFR §
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`42.123(a), as set forth below:
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`3.
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`37 CFR § 42.123(a)(1): The Board instituted the above-identified
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`inter partes review in a Decision dated December 31, 2014. This motion is being
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`filed within one month of the date the trial on which the present IPR was instituted.
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`4.
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`37 CFR § 42.123(a)(2): The institution Decision in the present IPR
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`relies on Japanese patent document JP04071222A, referred to as “Jinbo,” as a
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`primary reference for invalidating at least one claim. As such, Jinbo is relevant to
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`a claim for which the trial has been instituted.
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`Motion For Supplemental Information
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`IPR2014-01030
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`II. The Requested Supplemental Information
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`5.
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`As mentioned above, the present IPR refers to and relies on Japanese
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`patent document JP04071222A (“Jinbo”) for invalidating at least one claim.
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`Exhibit TSMC-1011 refers to the original, Japanese language version of Jinbo, and
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`Exhibit TSMC-1004 refers to an English translation of Jinbo.
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`6.
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`The English translation of Jinbo, Exhibit TSMC-1004, includes a
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`certification of translation of the Japanese language version Jinbo. P. 1. However,
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`Petitioner TSMC recently noted that this certification of translation did not include
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`some of the formalities of a declaration, as required under 37 CFR § 1.68.
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`Specifically, it did not include a statement that the declarant was warned that
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`willful false statements and the like so made are punishable by fine or
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`imprisonment, or both, under Section 1001 or Title 18 of the United States Code.
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`7.
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`Out of an abundance of caution, Petitioner presents the attached
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`affidavit of Exhibit TSMC-1012 by a person who is fluent in both Japanese and
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`English to declare that the translation is true and correct, and to satisfy all of the
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`formalities of 37 CFR § 1.68. To be clear, the English translation of Jinbo as
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`provided in originally filed Exhibit TSMC-1004 is not being changed.
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`III. Conclusion
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`For the reasons set forth above, TSMC asks that the Board accept this
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`motion. The undersigned further authorizes payment for any additional fees that
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`Motion For Supplemental Information
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`IPR2014-01030
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`may be due in connection with this Petition to be charged to Deposit Account No.
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`08-1394.
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`Respectfully submitted,
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`/David O’Dell/
`David M. O’Dell
`Lead Counsel el for Petitioner
`Registration No. 42,044
`HAYNES AND BOONE, LLP
`Telephone: 972/739-8635
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`Dated: February 2, 2015
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`IPR2014-01030
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`TSMC’S UPDATED EXHIBIT LIST
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`February 2, 2015
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`TSMC-1001
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`Cleeves, U.S. Patent No. 5,652,084
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`TSMC-1002
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`Prosecution History of U.S. Patent No. 5,652,084
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`TSMC-1003
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`Cleeves (II), U.S. Patent No. 5,710,061
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`TSMC-1004
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`Jinbo, Japanese Patent App. No. 04-71222 (English
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`Translation with Certification)
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`TSMC-1005
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`Brownell, U.S. Patent No. 4,591,547
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`TSMC-1006
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`McColgin, U.S. Patent No. 4,931,351
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`TSMC-1007
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`Matthews, U.S. Patent No. 4,548,688
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`TSMC-1008
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`Cooper, U.S. Patent No. 5,158,910
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`TSMC-1009
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`Declaration of Richard Blanchard
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`TSMC-1010
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`Curriculum Vitae of Richard Blanchard
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`TSMC-1011
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`Jinbo, Japanese Patent App. No. 04-71222
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`TSMC-1012
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`Affidavit of Erick Hasegawa
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`–1–
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`IPR2014-01030
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re patent of: Cleeves
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`U.S. Patent No. 5,652,084
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`Issued: July 29, 1997
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`Title:
`METHOD FOR REDUCED PITCH
`LITHOGRAPHY
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`IPR2014-01030
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`Attorney Docket No.: 34789.101
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`Customer No.: 27683
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`Real Party in Interest:
`Taiwan Semiconductor
`Manufacturing Company, Ltd.
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`§§§§§§§§§
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that
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`service was made on the Patent Owner as detailed below.
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`Date of service February 2, 2015
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`Manner of service Email: andriv.lytvyn@smithhopen.com;
`anton.hopen@smithhopen.com.
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`Documents served Motion For Supplemental Information
`TSMC’s Exhibit List
`Exhibit TSMC-1012
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`/David O’Dell/
`David M. O’Dell
`Lead Counsel for Petitioner
`Registration No. 42,044
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`–1–
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