Filed on behalf of Godo Kaisha IP Bridge 1
`
`By: Neil F. Greenblum (ngreenblum@gbpatent.com)
`
`Greenblum & Bernstein, P.L.C.
`
`1950 Roland Clarke Place
`
`Reston, VA 20191
`
`Tel: 703-716-1191
`
`Fax: 703-716-1180
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`and GLOBALFOUNDRIES U.S. INC.,
`Petitioners,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2016-012461
`U.S. Patent No. 7,126,174
`____________
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE UNDER 37 C.F.R. §
`42.64(b)(1)
`
`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`1 Case IPR2016-01247 has been consolidated with this proceeding.
`GlobalFoundries U.S. Inc.’s motions for joinder in Cases IPR2017-00925 and
`IPR2017-00926 were granted.
`
`
`
`By: Neil F. Greenblum (ngreenblum@gbpatent.com)
`
`Greenblum & Bernstein, P.L.C.
`
`1950 Roland Clarke Place
`
`Reston, VA 20191
`
`Tel: 703-716-1191
`
`Fax: 703-716-1180
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`and GLOBALFOUNDRIES U.S. INC.,
`Petitioners,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2016-012461
`U.S. Patent No. 7,126,174
`____________
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE UNDER 37 C.F.R. §
`42.64(b)(1)
`
`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`1 Case IPR2016-01247 has been consolidated with this proceeding.
`GlobalFoundries U.S. Inc.’s motions for joinder in Cases IPR2017-00925 and
`IPR2017-00926 were granted.
`
`
`
`IPR2016-01246
`Patent 7,126,174 B2
`
`
`
`Patent Owner Godo Kaisha IP Bridge 1 hereby objects to the
`
`admissibility of certain evidence submitted by Petitioner Taiwan Semiconductor
`
`Manufacturing Company, Ltd. in connection with Petitioner’s Reply (Paper 21).
`
`Specifically, pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner objects to the
`
`admission and consideration of Petitioner’s Reply (Paper 21) as well as Exhibits
`
`1001-1002, 1010, 1014-1017, 1025-1055 and 1057-1058.2
`
`Patent Owner’s Objections To References Previously Cited But Cited For
`Different Teachings In Petitioner’s Reply (Paper 21)
`
`
`
`Overall, Patent Owner objects to Petitioner’s Reply (Paper 21) as
`
`
`
`2 Petitioner’s Reply (Paper 21) and Exhibit 1057 are inconsistent in the manner
`
`in which they cite to various exhibits and are therefore, difficult to follow. For
`
`example, Petitioner’s Exhibit List identifies Exhibit 1058 as U.S. Patent No.
`
`5,173,439 to Dash et al. However, the Reply (Paper 21) refers to Exhibit 1058
`
`as “EX1058,” and “Dash,” (pp. 3, 11 of Reply), while Exhibit 1057 refers to
`
`Exhibit 1058 as “Dash” and “U.S. Patent No. 5,173,439.” Reply (Paper 21), pp.
`
`3, 11; Exhibit 1057, pp. 25, 11 at FN 3. Because of the inconsistent citations, it
`
`is difficult search the Reply (Paper 21) and Exhibit 1057 in order to compare the
`
`documents cited therein with the original Petitions (Paper 2) and expert
`
`declarations. This may result in an inadvertent omission of a document to which
`
`an objection is appropriate.
`
`
`
`
`
`2
`
`
`
`IPR2016-01246
`Patent 7,126,174 B2
`
`containing new evidence and arguments attempting to support a prima facie
`
`case for the unpatentability of an original claim, that could have been presented
`
`in a prior filing. The Reply (Paper 21) presents entirely new arguments, and
`
`relies upon entirely new evidence as to why a POSITA would have allegedly
`
`sought to combine Lee or Lowrey with either Ogawa or Noble, which arguments
`
`and evidence have not been previously presented by Petitioner and Declarant, in
`
`contravention of 37 C.F.R. §§ 42.23(b) and 42.123 (b).
`
`
`
`Patent Owner objects to Petitioner’s inclusion of any reference to Fig.
`
`20(b) of Exhibit 1001 because it was not in the original Petitions (Paper 2),
`
`Exhibits 1004 and 1024. (e.g. Reply (Paper 21), pp. 10-11.)
`
`
`
`Patent Owner objects to all mentions of Figs. 12(a)-(f) of Exhibit 1014 on
`
`the grounds that Exhibit 1014 was originally relied upon only as background
`
`state of the art to show that the invention of the patent was applicable to
`
`LOCOS as well as to an isolation of a trench structure or the like. Exhibit 1014,
`
`22:49-52. Patent Owner objects to the mentions of Figs. 12(a)-(f) and
`
`accompanying text on pp. 3-4, 9, 16-17 of Petitioner’s Reply (Paper 21) because
`
`it is only mentioned on pp. 25-26 of the ‘1246 and ‘1247 Petitions (Paper 2 in
`
`each proceeding) in an entirely different context. Exhibit 1014 was not relied
`
`upon to show how the trench of Noble or Ogawa would have to be modified in
`
`order to then be combined with Lee or Lowrey.
`
`Pursuant to 37 C.F.R. § 42.23(b), Patent Owner objects to all references
`
`3
`
`
`
`
`
`
`
`IPR2016-01246
`Patent 7,126,174 B2
`
`to embodiments and discussions of embodiments in Exhibits 1002, 1010, 1014,
`
`1015, and 1017 not previously relied upon in the Petitions (Paper 2).
`
`Patent Owner’s Objections to Petitioner’s Reply (Paper 21), Exhibits 1049
`and 1051 – Lacking Claim Interpretation
`
`
`
`Patent Owner objects to Petitioner’s argument relating to “L-shaped
`
`sidewalls” because Petitioner has failed to provide proper interpretation of the
`
`term. Petitioner’s Reply (Paper 21), pp. 40-42.
`
`
`
`Patent Owner also objects to Exhibits 1049 and 1051 as being untimely,
`
`not based upon a proposed claim interpretation, and therefore, irrelevant. These
`
`exhibits are therefore inadmissible under 37 C.F.R. §§ 42.23(b) and 42.123, and
`
`Fed. R. Evid. 401-403.
`
`Patent Owner’s Objections To Exhibit 1026-1027, 1028-1029, 1036, 1044,
`1058 – Incorporation By Reference
`
`
`
`Patent Owner objects to the inclusion of Exhibits 1026-1027, 1028-1029,
`
`1036, 1044 and 1058 because they were not submitted in the Petitions (Paper 2)
`
`and mere incorporation by reference in other documents is unavailing. 37
`
`C.F.R. §§ 42.23(b) and 42.123.
`
`Patent Owner’s Objections To Exhibit 1057 (Banerjee Declaration)
`
`
`
`Overall, Patent Owner objects to Exhibit 1057 in its entirety as lacking
`
`foundation, being confusing and misleading, containing attorney argument and
`
`hearsay, as being inaccurate and as containing new evidence attempting to
`
`support a prima facie case for the unpatentability of an original claim, which
`
`
`
`4
`
`
`
`IPR2016-01246
`Patent 7,126,174 B2
`
`could have been presented in a prior filing. The Declaration presents entirely
`
`new arguments, and relies upon entirely new evidence as to why a POSITA
`
`would have allegedly sought to combine Lee and Lowrey with either Ogawa or
`
`Noble, such arguments and evidence have not been previously presented by
`
`Petitioner and Declarant, in contravention of 37 C.F.R. §§ 42.23(b) and 42.123
`
`(b) and Fed. R. Evid. 401-403.
`
`
`
`In ¶¶49-154, there is a massive and disorganized discussion of Dr.
`
`Banerjee’s musings on what he might have done. Most of which is based upon
`
`entirely new documents and embodiments not discussed before. For example, in
`
`¶¶97 and 100, Banerjee relies on embodiments that are different from those
`
`previously relied upon in the Petitions (Paper 2). His observations are untimely,
`
`irrelevant, duplicative and unnecessary. To the extent any subject matter is
`
`based upon new materials, it is largely duplicative and cumulative and should
`
`be inadmissible as well.3
`
`
`
`
`
`3 By filing these objections, Patent Owner does not waive its right to seek to
`
`exclude the Banerjee Declaration, or any relief it may be entitled to, due to
`
`Petitioner improperly raising entirely new arguments (e.g., now submitting
`
`reasons, for the first time, as to how and why a POSITA would allegedly
`
`combine Lee or Lowrey with Ogawa or Noble) and submitting entirely new
`
`
`
`5
`
`
`
`IPR2016-01246
`Patent 7,126,174 B2
`
`
`Patent Owner’s Objections to Petitioner’s Exhibits 1001-1002, 1010, 1014-
`1017, 1025-1055 and 1057-1058 – Irrelevant and Non-Probative Evidence
`
`
`
`Petitioner’s Exhibits 1025-1055 and 1057-1058 as well as new references
`
`to additional embodiments and accompanying text in Exhibits 1014 and 1016
`
`are irrelevant to any material facts at issue in these proceedings, and any
`
`probative value Petitioner may try to assign them is substantially outweighed by
`
`their tendency to confuse the issues, mislead the Board, waste time, and
`
`needlessly present duplicative and cumulative evidence. These exhibits are
`
`therefore inadmissible under Fed. R. Evid. 401-403.
`
`
`
`Petitioner’s Exhibits 1025-1055 and 1057-1058 as well as new references
`
`to additional embodiments and accompanying text in Exhibits 1014 and 1016
`
`are objected to as lacking foundation, confusing and misleading, containing
`
`attorney argument, hearsay, as inaccurate and as containing new evidence
`
`attempting to support a prima facie case for the unpatentability of an original
`
`claim, and which could have been presented in a prior filing. Petitioner presents
`
`entirely new arguments, and entirely new evidence as to why a POSITA would
`
`have allegedly sought to combine Lee and Lowrey with either Ogawa or Noble,
`
`which arguments and evidence have not been previously presented by
`
`
`
`
`
`
`evidence (Exhibits 1025-1055 and 1057-1058) in its Reply (Paper 21), and
`
`thereby failing to comply with 37 C.F.R. 42.23(b) and 42.123(a) & (b).
`
`
`
`6
`
`
`
`IPR2016-01246
`Patent 7,126,174 B2
`
`Petitioner, in contravention of 37 C.F.R. §§ 42.23(b) and 42.123 (b).
`
`
`
`Petitioner’s Reply (Paper 21) and Exhibit 1057 state that Exhibits 1015
`
`and 1016 “are nearly identical.” Petitioner’s Reply (Paper 21), pp. 36-37;
`
`Exhibit 1057, FN 3 of ¶52. This was not argued previously, therefore new
`
`references to embodiments and accompanying text in Exhibit 1016 are
`
`inadmissible under 37 C.F.R. § 42.123.
`
`
`
`Patent Owner additionally objects to Exhibits 1025-1055 and 1057-1058
`
`pursuant to 37 C.F.R. § 42.123 for being untimely and beyond the scope of what
`
`was argued in the original Petitions (Paper 2).
`
`
`
`Petitioner admits in its own Reply (Paper 21) that Exhibits 1032, 1034-
`
`1035, 1042-1043, 1055, and 1057-1058 “are duplicative of evidence in TSMC
`
`petitions, and thus not essential to any obviousness findings.” (Petitioner’s
`
`Reply (Paper 21), p. 17). As such, Patent Owner objects to these exhibits as well
`
`as Exhibits 1025-1031, 1033, 1036-1041, 1044-1054, and new belated
`
`references to new embodiments and accompanying text in Exhibits 1001-1002,
`
`1010, 1014-1017. Fed. R. Evid. 401-403.
`
`
`
`Furthermore, because Petitioner’s Exhibits 1049, 1051, and 1057 “post-
`
`date the invention,” these exhibits are irrelevant. Petitioner’s Reply (Paper 21),
`
`p. 41. Fed. R. Evid. 401-403.
`
`
`
`
`
`
`
`7
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`
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`IPR2016-01246
`Patent 7,126,174 B2
`
`Patent Owner’s Objections to Petitioner’s Reply (Paper 21), Exhibits 1002,
`1010, 1014-1015, 1017, 1025-1055 and 1057-1058 – Untimely
`
`
`
`Petitioner did not timely submit or request to submit supplemental
`
`information once the trial had been instituted in accordance with 37 C.F.R. §
`
`42.123, and instead, has improperly introduced new arguments and evidence
`
`with the Reply (Paper 21). Therefore, Patent Owner objects to Exhibits 1025-
`
`1055 and 1057-1058 and the new embodiments not cited previously in Exhibits
`
`1002, 1010, 1014, 1015, and 1017 as untimely.
`
`Conclusion
`
`
`
`With these objections, Patent Owner explicitly reserves the right to file
`
`motions to exclude portions of, or the entirety of, Petitioner’s Reply (Paper 21),
`
`Exhibits 1001-1002, 1010, 1014-1017, 1025-1055 and 1057-1058.
`
`
`
`Dated: June 21, 2017
`
`
`
`{J709902 03148024.DOC}
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`Respectfully submitted,
`
`
`
`
`/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
`
`
`8
`
`
`
`IPR2016-01246
`Patent 7,126,174 B2
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true copy of the foregoing:
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE UNDER 37 C.F.R. §
`42.64(b)(1)
`
`was served by electronic mail on this 21st day of June, 2017, upon Counsel for
`
`Petitioner, as follows:
`
`Darren M. Jiron (darren.jiron@finnegan.com);
`J.P. Long (jp.long@finnegan.com);
`E. Robert Yoches (bob.yoches@finnegan.com);
`Joshua L. Goldberg (joshua.goldberg@finnegan.com);
`TSMC-IPB-PTAB@finnegan.com;
`Kent J. Cooper (kent.cooper@kjcooperlaw.com);
`and Adam Floyd (floyd.adam@dorsey.com).
`
`
`
`
`
`
`/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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