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`By: Neil F. Greenblum (ngreenblum@gbpatent.com)
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`Greenblum & Bernstein, P.L.C.
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`1950 Roland Clarke Place
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`Reston, VA 20191
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`Tel: 703-716-1191
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`Fax: 703-716-1180
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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 LIMITED,
`Petitioner,
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`v.
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`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2016-012461
`U.S. Patent No. 7,126,174 B2
`____________
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`PATENT OWNER’S OBJECTIONS TO EVIDENCE UNDER 37 C.F.R. §
`42.64(b)(1)
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`
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`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`1 Case IPR2016-01247 has been consolidated with this proceeding.
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`Case IPR2016-01246, IPR2016-01247
`U.S. Patent No. 7,126,174 B2
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`I.
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`
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`Introduction
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner Godo Kaisha IP
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`Bridge 1 (“IP Bridge” or “Patent Owner”) files the following objections to
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`evidence submitted by Petitioner which accompanies the Petition for Inter
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`Partes Review of U.S. Patent No. 7,126,174 (“Petition”). These objections are
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`timely presented, as they are filed within ten business days of the institution of
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`trial on January 4, 2017. 37 C.F.R. § 42.64 (b)(1) (January 16 being a holiday).
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`Patent Owner reserves the right to file a motion to exclude the evidence
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`objected to and identified herein.
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`II.
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`Petitioner Exhibits 1003, 1005, 1006, 1007, 1008, 1011, 1012, 1013,
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`1016, and 1018
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`Patent Owner objects to Exhibits 1003 (Shinoda et al.), 1005 (Appels et
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`al.), 1006 (Nagasawa et al.), 1007 (Brand et al.), 1008 (Brandt et al.),
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`1011(Douglas), 1012 (Thompson et al.), 1013 (Chau et al.), 1016 (Mandelman
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`et al.), 1018 (Iyer) (collectively, hereinafter “the objected-to exhibits”) under
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`Federal Rule of Evidence 401-403. Each of the objected-to exhibits is not
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`relevant to this proceeding. They are cursory and contain little or no discussion
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`regarding their relevance.
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`1
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`Case IPR2016-01246, IPR2016-01247
`U.S. Patent No. 7,126,174 B2
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`The grounds instituted for trial rely only upon Exhibits 1001 (Segawa et
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`al.), 1002 (Lee et al.), 1004 (Banerjee Declaration), 1009 (Schuegraf et al.),
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`1010 (Ogawa et al.), 1015 (Noble et al.), 1017 (Lowrey et al.).
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`Accordingly, any facts within Exhibits 1003, 1005, 1006, 1007, 1008,
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`1011, 1012, 1013, 1016, and 1018 are not “of consequence in determining the
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`action,” as these exhibits are not part of any grounds instituted for trial, and
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`were not referred to or cited by the Board in the Decision on Institution.
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`Consequently, Patent Owner has no opportunity to specifically address the
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`Board’s position as any of these Exhibits. FRE 401-403.
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`Patent Owner further objects to Exhibits 1003, 1005, 1006, 1007, 1008,
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`1011, 1012, 1013, 1016, and 1018 under Federal Rule of Evidence 401-403.
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`Because these exhibits were only summarily discussed by Petitioner/Declarant,
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`and no effort was made to specifically link any of them to their invalidity
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`contentions, it is virtually impossible to discuss them and respond in a coherent
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`manner. Each of the aforementioned Exhibits may thus result in unfair
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`prejudice, confusing the issues, misleading the factfinder, undue delay, wasting
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`time, or needlessly presenting cumulative evidence. FRE 401-403.
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`The issues for trial are narrow, and the objected-to exhibits are
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`cumulative at best, add nothing relevant to the grounds instituted for trial, and
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`could cause confusion as to what evidence is available in the proceeding.
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`2
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`Case IPR2016-01246, IPR2016-01247
`U.S. Patent No. 7,126,174 B2
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`III. Specific Objections
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`
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`Exhibit 1003: Its probative value is substantially outweighed by a danger
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`of unfair prejudice, confusing the issues, undue delay, wasting time, or
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`needlessly presenting cumulative evidence. FRE 401-403.
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`
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`Exhibit 1005: Its probative value is substantially outweighed by a danger
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`of unfair prejudice, confusing the issues, undue delay, wasting time, or
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`needlessly presenting cumulative evidence. FRE 401-403.
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`
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`Exhibit 1006: Its probative value is substantially outweighed by a danger
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`of unfair prejudice, confusing the issues, undue delay, wasting time, or
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`needlessly presenting cumulative evidence. FRE 401-403.
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`
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`Exhibit 1007: Its probative value is substantially outweighed by a danger
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`of unfair prejudice, confusing the issues, undue delay, wasting time, or
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`needlessly presenting cumulative evidence. FRE 401-403.
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`
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`Exhibit 1008: Its probative value is substantially outweighed by a danger
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`of unfair prejudice, confusing the issues, undue delay, wasting time, or
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`needlessly presenting cumulative evidence. FRE 401-403.
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`
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`Exhibit 1011: Its probative value is substantially outweighed by a danger
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`of unfair prejudice, confusing the issues, undue delay, wasting time, or
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`needlessly presenting cumulative evidence. FRE 401-403.
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`3
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`Case IPR2016-01246, IPR2016-01247
`U.S. Patent No. 7,126,174 B2
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`Exhibit 1012: Its probative value is substantially outweighed by a danger
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`of unfair prejudice, confusing the issues, undue delay, wasting time, or
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`needlessly presenting cumulative evidence. FRE 401-403.
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`
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`Exhibit 1013: Its probative value is substantially outweighed by a danger
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`of unfair prejudice, confusing the issues, undue delay, wasting time, or
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`needlessly presenting cumulative evidence. FRE 401-403.
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`
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`Exhibit 1016: Its probative value is substantially outweighed by a danger
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`of unfair prejudice, confusing the issues, undue delay, wasting time, or
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`needlessly presenting cumulative evidence. FRE 401-403.
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`
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`Exhibit 1018: Its probative value is substantially outweighed by a danger
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`of unfair prejudice, confusing the issues, undue delay, wasting time, or
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`needlessly presenting cumulative evidence. FRE 401-403.
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`IV. Documents Dated After the Japanese Priority Date
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`
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`Patent Owner objects to the following exhibits because they have filing
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`dates after the ‘174 Patent’s priority date of July 27, 1995.
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`Exhibit 1009: filing date of October 24, 1995
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`Exhibit 1013: filing date of December 29, 1995
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`Exhibit 1014: filing date of December 12, 1995
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`4
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`Case IPR2016-01246, IPR2016-01247
`U.S. Patent No. 7,126,174 B2
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`V. Conclusion
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`
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`With these objections, Patent Owner explicitly reserves the right to file
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`motions to exclude portions of, or the entirety of, 1003, 1005, 1006, 1007, 1008,
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`1011, 1012, 1013, 1016, and 1018.
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`
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`Dated: January 17, 2017
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`Respectfully submitted,
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`
`
`
`/Neil F. Greenblum/
`Neil F. Greenblum
`Registration No. 28,394
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`Tel: 703-716-1191
`Fax: 703-716-1180
`Email: ngreenblum@gbpatent.com
`
`Attorney for Patent Owner,
`GODO KAISHA IP Bridge 1
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`{J709902 02986286.DOC}
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`5
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`Case IPR2016-01246, IPR2016-01247
`U.S. Patent No. 7,126,174 B2
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of the foregoing:
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`PATENT OWNER’S OBJECTIONS TO EVIDENCE UNDER 37 C.F.R. §
`42.64(b)(1)
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`was served by electronic mail on this 17th day of January, 2017, upon Counsel
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`for Petitioner, as follows:
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`Darren M. Jiron (darren.jiron@finnegan.com);
`J.P. Long (jp.long@finnegan.com);
`E. Robert Yoches (bob.yoches@finnegan.com); and
`TSMC-IPB-PTAB@finnegan.com.
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`
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`
`
`/Neil F. Greenblum/
`Neil F. Greenblum
`Registration No. 28,394
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`Tel: 703-716-1191
`Fax: 703-716-1180
` Email: ngreenblum@gbpatent.com
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