Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
`
`May 25, 2017
`
`1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` __________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` __________
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LIMITED
` Petitioner
` v.
` GODO KAISHA IP BRIDGE 1
` Patent Owner
` __________
` Case IPR2016-01247/2016-01246
` U.S. Patent No. 7,126,174
` __________
`
` Reston, Virginia
` May 25, 2017
`
` CROSS-EXAMINATION
` E. FRED SCHUBERT, Ph.D.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 1 of 210
`
`TSMC Exhibit 1056
`TSMC v. IP Bridge
`IPR2016-01246
`
`
`Schubert, Ph.D., E. Fred
`
`May 25, 2017
`
`1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` __________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` __________
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LIMITED
` Petitioner
` v.
` GODO KAISHA IP BRIDGE 1
` Patent Owner
` __________
` Case IPR2016-01247/2016-01246
` U.S. Patent No. 7,126,174
` __________
`
` Reston, Virginia
` May 25, 2017
`
` CROSS-EXAMINATION
` E. FRED SCHUBERT, Ph.D.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 1 of 210
`
`TSMC Exhibit 1056
`TSMC v. IP Bridge
`IPR2016-01246
`
`
`
`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
`
`May 25, 2017
`
`2
`
` Cross-Examination of E. FRED SCHUBERT,
`Ph.D., a witness herein, called for examination by
`counsel for Petitioner in the above-entitled matter,
`pursuant to notice, the witness being duly sworn by
`SUSAN L. CIMINELLI, CRR, RPR, a Notary Public in and
`for the Commonwealth of Virginia, taken at the
`offices of Greenblum & Bernstein, P.L.C., 1950
`Roland Clarke Place, Reston, Virginia, commencing at
`8:51 a.m.
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
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`Page 2 of 210
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`
`
`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
`
`May 25, 2017
`
`3
`
`APPEARANCES:
` On behalf of the Patent Owner:
` NEIL F. GREENBLUM, ESQUIRE
` Greenblum & Bernstein, P.L.C.
` 1950 Roland Clarke Place
` Reston, Virginia 20191-1411
` (703) 616-1191
` ngreenblum@gbpatent.com
` On behalf of the Petitioner:
` DARREN M. JIRON, ESQUIRE
` Finnegan, Henderson, Farabow, Garrett &
` Dunner, LLP
` Two Freedom Square
` 11955 Freedom Drive
` Reston, Virginia 20190-5675
` 571-203-2700
` Darren.Jiron@finnegan.com
` -and-
` J. PRESTON LONG, Ph.D., ESQUIRE
` Finnegan, Henderson, Farabow, Garrett &
` Dunner, LLP
` 901 New York Avenue, N.W.
` Washington, D.C.
` (202) 408-4000
` jp.long@finnegan.com
`
` ALSO PRESENT:
` Amanda Dove, Paralegal G&B
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`Page 3 of 210
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`
`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
`
`May 25, 2017
`
`4
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` C O N T E N T S
`E. FRED SCHUBERT, PH.D. EXAMINATION
` By Dr. Long 6
`
` Afternoon Session - Page 96
`
` E X H I B I T S
`**Exhibits previously marked.
`IP BRIDGE EXHIBIT NO. PAGE NO.
`Exhibit 2012 Declaration of
` E. Fred Schubert, Ph.D. 8
`Exhibit 2055 Declaration of E. Fred Schubert,
` Ph.D. in Support of Patent
` Owner's Response 8
`Exhibit 1004 (TSMC) Corrected Dr. Sanjay
` Kumar Banerjee Declaration 139
`
`TSMC EXHIBIT NO. PAGE NO.
`Exhibit 1001 (TSMC) U.S. Patent 7,126,174 83
`Exhibit 1010 (TSMC) U.S. Patent 4,506,434 119
`Exhibit 1015 (TSMC) U.S. Patent 5,539,229 119
`Exhibit 1016 (TSMC) U.S. Patent 5,521,422 130
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`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
`
`May 25, 2017
`
`5
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` E X H I B I T S
`**Exhibits previously marked.
`TSMC EXHIBIT NO. PAGE NO.
`Exhibit 1014 Ueda '812 reference 142
`Exhibit 1002 Lee reference 143
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`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
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`May 25, 2017
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` P R O C E E D I N G S
`Whereupon,
` E. FRED SCHUBERT, Ph.D.,
`was called as a witness by counsel for Petitioners,
`and having been duly sworn, was examined and
`testified as follows:
` CROSS-EXAMINATION
`BY DR. LONG:
` Q. Dr. Schubert, could you state your full
`name and address, just for the record.
` A. My name is Fred Schubert, and I have a
`home address and I have the work address.
` Q. Either one will be fine.
` A. My work address is Rensselear Polytechnic
`Institute, 110 Eighth Street in Troy, New York.
` Q. How many depositions have you given?
` A. Approximately 10.
` Q. Just for a refresher, I'm going to go
`over a few instructions. Is that okay? So as you
`know, the reporter is writing down what we say and
`making a record, so I ask that you please just
`answer with verbal responses, rather than head nods
`
`202-220-4158
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`www.hendersonlegalservices.com
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`
`
`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
`
`May 25, 2017
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`or head shakes, just so that she can accurately
`record your responses. Is that okay?
` A. Yes.
` Q. And for the same reason, I just ask that
`you let me finish my question completely and not
`talk over me, and I'll do the same for you, just so
`that the record is clear and the reporter can
`understand what we are saying. Is that okay?
` A. Yes.
` Q. And you understand that you're under oath
`today, correct?
` A. Yes.
` Q. Is there anything that would prevent you
`from giving full and accurate testimony today?
` A. No.
` Q. Are you on any medication that would
`affect your ability to give full answers?
` A. No.
` Q. For simplicity, I'm going to refer to
`U.S. Patent Number 7,126,174 as the '174 patent. Is
`that okay with you?
` A. Yes.
`
`202-220-4158
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`www.hendersonlegalservices.com
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`
`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
`
`May 25, 2017
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` Q. And you'll understand what I mean when I
`say the '174 patent?
` A. Yes.
` Q. I'm also going to refer to Exhibit -- and
`I apologize. I didn't realize these would be rubber
`banded and not bound. So I'm going to introduce for
`the record, this is IP Bridge Exhibit 2012 in
`proceeding number IPR2016-01246.
` (IP Bridge Exhibit 2012 was
` marked for identification.)
` DR. LONG: And I'll also introduce
`Exhibit Number 2055 in the same proceeding.
` (IP Bridge Exhibit 2055 was
` marked for identification.)
` MR. GREENBLUM: I'll just ask you -- I'm
`a bit confused. These are two different exhibits?
` DR. LONG: That's my understanding. One
`is marked 2055. One is marked 2012.
` MR. GREENBLUM: You're going to have to
`help me out here. He did one declaration.
` DR. LONG: I believe the second
`declaration, 2055, was submitted as part of the
`
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`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
`
`May 25, 2017
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`supplemental evidence in response to objections
`after the Patent Owner's response.
` MR. GREENBLUM: And 2012?
` DR. LONG: 2012 was submitted with the
`Patent Owner's response.
` MR. GREENBLUM: Got it. Okay.
`BY DR. LONG:
` Q. So my first question is, are you familiar
`with these documents?
` MR. GREENBLUM: I just think that it
`might be helpful if you explain to him. I don't
`know if he is going to know any better than I did
`what you're talking about. And you might -- if you
`would explain it to him. Otherwise he is going to
`be confused. Do what you want.
` THE WITNESS: Yes, I'm familiar with it.
`BY DR. LONG:
` Q. And did you author these two documents?
` A. It is my understanding that I signed one
`document on March 24th, 2017, and we have here two
`documents, so it is my recollection that I signed
`one document.
`
`202-220-4158
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`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
`
`May 25, 2017
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` Q. So to your knowledge, is there any
`difference between the two documents in front of
`you?
` A. I can check.
` Q. I don't want you to compare page by page.
`So do you have any reason to believe that these are
`different documents?
` MR. GREENBLUM: Objection to the form of
`the question.
` THE WITNESS: When you refer to
`documents, are you referring to the document,
`including my CV, or excluding my CV?
`BY DR. LONG:
` Q. Including your CV.
` A. The CV is occasionally updated.
` Q. Did you submit an updated CV after you
`signed your declaration on March 24th?
` A. Submit to whom?
` Q. The attorneys at Greenblum & Bernstein.
` A. That's possible.
` Q. Do you know for sure, yes or no, that you
`did or did not?
`
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`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
`
`May 25, 2017
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` A. It could be that one of them is a 2016
`CV, and one of them is a 2017 CV. I can check.
` Q. In that case, what we'll do for purposes
`of today is we will put aside Exhibit 2012, which I
`understand is the one that may have an older CV.
`And when I refer to your Patent Owner's response
`declaration, I will refer to Exhibit 2055. Is that
`okay?
` MR. GREENBLUM: I'll object to the
`characterization. You can answer.
` THE WITNESS: So you want me to put this
`away?
`BY DR. LONG:
` Q. Yes. When is the last time you read your
`Patent Owner's response declaration?
` A. Including the CV, or excluding the CV?
` Q. Excluding the CV. Let me clarify. Any
`portion of it.
` A. Yesterday.
` Q. Approximately how long did you spend
`reviewing it?
` MR. GREENBLUM: Objection to the form.
`
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`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
`
`May 25, 2017
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`09:10:44
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` THE WITNESS: Yesterday or also -- are
`you just referring to yesterday, or are you
`referring to a longer time frame?
`BY DR. LONG:
` Q. Just yesterday.
` A. Yesterday, I just looked at a few
`selected pages.
` Q. And did you choose which pages to review?
` A. Yes.
` Q. Did you select all of the pages that you
`reviewed?
` A. Yesterday?
` Q. Yesterday.
` A. Yesterday, it was just a few pages, and
`probably I selected most of them. Or maybe all of
`them.
` Q. Probably, maybe. Okay. Have you
`prepared any other declarations or expert report --
`reports pertaining to the '174 patent?
` A. Yes.
` Q. You prepared a report prior to your
`Patent Owner response declaration in these
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`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
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`May 25, 2017
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`proceedings, correct?
` A. Well, I'm a little bit confused, because
`we have -- you mentioned initially, there are two
`declarations, and now you're referring to one
`declaration.
` Q. Did you submit another declaration on
`October 5th, 2016, regarding the '174 patent?
` MR. GREENBLUM: Objection to form. You
`can answer.
` THE WITNESS: I don't recall the date.
`BY DR. LONG:
` Q. But you did submit another declaration
`around that time regarding the '174 patent with
`regard to these proceedings?
` A. If I recall correctly, there were two
`other declarations in the IPR proceedings.
` Q. Did those both relate to the '174 patent?
` A. Yes.
` Q. Did you review those other declarations
`preparing for today?
` A. Yes.
` Q. Are there any differences between the --
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`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
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`May 25, 2017
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`09:14:50
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`strike that.
` What are the differences between your
`earlier declaration and the declaration in front of
`you?
` MR. GREENBLUM: Objection to the form.
`BY DR. LONG:
` Q. Have your opinions changed between the
`earlier declaration and the declaration that's in
`front of you?
` A. This declaration is more recent.
` Q. Are the opinions contained in that report
`different than the opinions in the previous report?
` A. In all the declarations that I submitted,
`it was my opinion that the '174 patent is not
`obvious and not anticipated.
` Q. And is the reason that you provided the
`same in regards to all of your declarations that you
`submitted?
` MR. GREENBLUM: Objection to the form.
` THE WITNESS: My opinion has not changed
`in that regard.
`BY DR. LONG:
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`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
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`May 25, 2017
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`09:16:32
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`09:16:34
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` Q. Did you submit any expert reports
`regarding the '174 patent in any other proceedings?
` A. There was a district court proceeding in
`the Eastern District of Texas, and I submitted
`reports under that district court proceeding.
` Q. How many reports?
` MR. GREENBLUM: Objection to the form.
` THE WITNESS: Which proceeding are you
`referring to?
`BY DR. LONG:
` Q. I'm referring to the one that you're
`referring to, the proceeding in the Eastern District
`of Texas in which you submitted reports.
` A. I recall that there was a validity
`report. I recall that there was an infringement
`report. I recall that there was a report in support
`of a damage report. There could have been a report
`with respect to claim construction. That is what I
`recall at the moment.
` Q. And your validity report that you
`submitted in the Eastern District of Texas action,
`are there any opinions you provided in that report
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`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
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`May 25, 2017
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`09:19:09
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`09:19:15
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`that differ from the opinions you provided in
`Exhibit 2055?
` MR. GREENBLUM: Objection, lack of
`foundation. And I'll go beyond it.
` DR. LONG: I think you're only permitted
`speaking objections in the PTAB. So if you want to
`go off the record and discuss --
` MR. GREENBLUM: I don't want to go off
`the record, but I'll just tell you that there were
`different documents applied there, so your questions
`are just confusing the record. I'm doing this to
`help you. I'm not giving you any answers.
`BY DR. LONG:
` Q. So I'll clarify. With regard to the
`grounds for invalidity that are at issue in these
`proceedings, by which I mean Case Numbers IPR2016-2
`-- excuse me, dash 01246 and dash 01247, namely
`involving the Lee, Lowrey, Ogawa, and Noble
`references, did you provide opinions on the validity
`of the '174 patent with regard to -- strike that.
`That was a bad question.
` Did you provide any opinions regarding
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`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
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`May 25, 2017
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`09:20:49
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`the Lee, Lowrey, Ogawa, or Noble references in the
`Eastern District of Texas action?
` A. All four of them or one of the four? You
`say any of the four?
` Q. Any of the four.
` A. Any of the four, yes.
` Q. Which ones?
` A. You mean which references were asserted
`in the Eastern District of Texas?
` Q. I'm asking about your invalidity report
`that you submitted in connection with the action in
`the Eastern District of Texas. Did you provide any
`opinions about the Lee reference in that report?
` A. Can I have a copy of the report?
` Q. I do not have a copy of the report. It
`was not produced.
` A. If I am asked to talk about the report, I
`would appreciate having a copy of the report.
` Q. I would appreciate a copy as well, but --
` MR. GREENBLUM: It's under protective
`order.
` DR. LONG: Is there any confidential
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`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
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`May 25, 2017
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`09:22:39
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`information in the validity report?
` MR. GREENBLUM: I have to tell you, I
`have not seen it, so I have no idea what's in it,
`but I was told it's under protective order and that
`we can't see it.
`BY DR. LONG:
` Q. What did you do to prepare for today's
`deposition?
` A. I reviewed the petition. I reviewed the
`declarations supporting the petition. I reviewed
`the decision by the PTAB. I reviewed my own
`declaration. I reviewed the prior art that is
`alleged to obviate the '174 patent. I reviewed
`various other references.
` Q. Anything else?
` A. You're just talking directly as
`preparation for this, or in general, what I did over
`the course of the last months, or even the last
`year?
` Q. What would you consider preparing for
`today's deposition, whatever that is. That's what
`I'm asking about.
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`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
`
`May 25, 2017
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`09:25:05
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`09:25:11
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`09:25:26
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` A. I briefly looked at the other patents in
`the family tree of the '174 patent, just as a
`refresher. I looked at the documents that are
`relevant -- that I considered relevant here.
` Q. Are there any documents that you consider
`relevant that you haven't already mentioned, namely
`the petition, Dr. Banerjee's declarations, PTAB
`decision, your declaration, the asserted prior art
`combinations, various other references, patents
`related to the '174 family tree?
` A. Yes.
` Q. Would you please tell me what they are?
` A. The file histories.
` Q. Which file histories are you referring
`to?
` A. The file history of the '174 patent and
`the file histories of the patents in the '174 family
`tree.
` Q. Any others?
` A. The Japanese priority applications.
` Q. Did you review any other documents you
`consider relevant that you haven't already
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`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
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`May 25, 2017
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`09:27:48
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`09:27:49
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`identified?
` A. The petition. The expert declarations.
`The patent itself. The '174 patent itself. My
`declarations. Patent Owner response. And technical
`literature relating to the topic. That was cited in
`the documents.
` Q. Any others?
` A. I don't recall any at this time.
` Q. Why did you review these documents?
` A. I felt responsible to review these
`documents, because I'm a technical expert in this
`matter.
` Q. Did you speak with anyone to prepare for
`today?
` A. Yes.
` Q. Who?
` A. I spoke with attorney Neil Greenblum.
` Q. Anyone else?
` A. You're just talking about technical
`matters, or like hotel arrangements or anything like
`that?
` Q. I'm only referring to technical matters.
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`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
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`May 25, 2017
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`09:31:16
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`The things you did to prepare to give your testimony
`today.
` A. Just attorney Neil Greenblum.
` Q. When did you meet with attorney Neil
`Greenblum?
` A. I met with him about 10 days ago, or two
`weeks ago. And I met with him yesterday.
` Q. How long did you meet with him two weeks
`ago?
` A. Approximately one and a half days.
` Q. And when you met with him two weeks ago,
`did you interact in person or remotely?
` A. In person.
` Q. Where was that?
` A. Here in this office.
` Q. When you met with attorney Neil Greenblum
`yesterday, how long did you meet with him for?
` A. A little more than an hour.
` Q. And that was face by face here, correct?
` A. Yes.
` Q. Did you meet with any non-attorneys to
`discuss technical matters relating to the '174
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`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
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`May 25, 2017
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`09:33:39
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`patent?
` A. Yesterday?
` Q. At any time since you were retained to
`provide opinions on the '174 patent.
` A. Could I hear the question again?
` Q. At any time since you have been retained
`to provide opinions regarding the '174 patent, have
`you spoken to any non-attorneys about technical
`issues relating to your opinions on the validity of
`the '174 patent?
` A. Are you referring to the IPR proceedings,
`or the Eastern District of Texas proceedings?
` Q. I'm referring to any proceeding involving
`the '174 patent on which you provided a validity
`opinion.
` A. In the Eastern District of Texas
`proceedings, I talked to personnel of a reverse
`engineering company that conducted analysis of
`certain commercial products.
` Q. What was the name of that company?
` MR. GREENBLUM: Hold on a second. I have
`to think about this.
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`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
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`May 25, 2017
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` DR. LONG: I'll ask another question.
` MR. GREENBLUM: I'm just concerned about
`attorney-client privilege, and I'm not involved in
`that proceeding, so --
` DR. LONG: I understand.
`BY DR. LONG:
` Q. Who directed you to speak with this
`person at the reverse engineering company?
` MR. GREENBLUM: You can answer that.
`BY DR. LONG:
` Q. And I don't even need a name. I just
`need to know, was it an attorney or was it not an
`attorney.
` A. The communication was coordinated by an
`attorney.
` Q. Have you spoken with any non-attorneys
`about technical matters related to '174 patent,
`without having been instructed to do so by an
`attorney?
` A. Me talking to that reverse engineering
`firm, I wouldn't characterize as me being directed
`by an attorney to talk to them. It was more of a
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`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
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`May 25, 2017
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`natural matter to talk to the reverse engineering
`firm that conducts analysis. It was -- it was more
`of a natural thing to talk to them. The
`communication was coordinated by an attorney.
` DR. LONG: Take a five-minute break?
` MR. GREENBLUM: Okay.
` (Recess.)
`BY DR. LONG:
` Q. I'd like to start talking about your
`background and experience a little bit. Could you
`please turn to your CV in Exhibit 2055?
` A. Yes.
` Q. So on the first page of your CV, it notes
`that you have a degree in 1981 from the University
`of Stuttgart, correct?
` A. Correct.
` Q. What is that degree?
` A. It's master of science, and at that time,
`it was called in German, Diplom Ingenieur.
` Q. What was the time frame for earning that
`degree?
` A. I joined the university in 1975 and left
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 24 of 210
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`
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`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
`
`May 25, 2017
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`the university in 1981.
` Q. And I notice you have a degree in 1978 as
`well, correct?
` A. Yes.
` Q. Was your time between 1975 and 1981
`continuous studies at the University of Stuttgart?
` A. There was a period where I was an
`exchange student at Oregon State University, 1977 to
`1978.
` Q. And during your time earning your
`master's in 1981 at the University of Stuttgart, did
`you have hands-on experience working in a silicon IC
`fabrication facility?
` A. At that time, I worked in a silicon
`integrated circuit facility in which I designed the
`masks, fabricated, processed silicon piezoelectric
`resistors that can be used as pressure sensors. And
`I essentially did the fabrication process there,
`including the design, fabrication, testing.
` Q. Are piezoresistors MOSFETs?
` A. The resistors are not MOSFETs themselves,
`but resistors can be part of an integrated circuit
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 25 of 210
`
`
`
`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
`
`May 25, 2017
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`09:50:08
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`that includes MOSFETs.
` Q. In your experience in the silicon IC
`facility that you just described, did you design
`circuits that included MOSFETs?
` A. There was a bridge, resistor bridge, and
`there was some electronics associated with that
`rectifier bridge. I don't recall all the details.
`I can look back at that project.
` Q. So is it your testimony that the resistor
`bridge and associated electronics that you designed
`included MOSFETs at that time?
` A. I don't recall. It may not have included
`MOSFETs.
` Q. During your time in the silicon IC
`facility, University of Stuttgart between 1975 and
`1981, did you design or fabricate any MOSFET
`devices?
` A. Well, if you say 1981, I also had a --
`like an industry semester or internship at the IBM
`fabrication facility that was in a town close to
`Stuttgart. And so I worked there for a period of
`time in the mask design -- in the mask design area.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 26 of 210
`
`
`
`Case: IPR2016-01247; IPR2016-01246
`Schubert, Ph.D., E. Fred
`
`May 25, 2017
`
`09:52:51
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` Q.
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