Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 27
`Entered: June 23, 2017
`
`
`
`
`
`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
`Patent 7,126,174 B2
`____________
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`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.
`
`
`571-272-7822
`
`
`
`
`Paper 27
`Entered: June 23, 2017
`
`
`
`
`
`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
`Patent 7,126,174 B2
`____________
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`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
`
`
`A conference call in the above proceeding was held on June 20, 2017,
`
`among respective counsel for Petitioner Taiwan Semiconductor
`
`Manufacturing Company, Ltd. and Patent Owner Godo Kaisha IP Bridge 1,
`
`and Judges Arbes, Fitzpatrick, and Chagnon. The purpose of the call was to
`
`discuss Patent Owner’s request for authorization to file a motion to strike
`
`Petitioner’s Reply (Paper 21) and exhibits filed with the Reply, including the
`
`reply declaration of Sanjay Kumar Banerjee, Ph.D. (Exhibit 1057). A court
`
`reporter was present on the call, and Patent Owner filed a transcript of the
`
`call as Exhibit 2057.
`
`During the call, Patent Owner argued that Petitioner’s Reply and its
`
`citations to newly-filed exhibits constitute improper new argument. See
`
`37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the
`
`corresponding . . . patent owner response.”); Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,763–48,767 (Aug. 14, 2012) (“The petition
`
`lays out the petitioner’s grounds for review and supporting evidence, on a
`
`claim-by-claim basis, for instituting the requested proceeding. . . . While
`
`replies can help crystalize issues for decision, a reply that . . . belatedly
`
`presents evidence will not be considered and may be returned. . . . Examples
`
`of indications that a new issue has been raised in a reply include new
`
`evidence necessary to make out a prima facie case for the patentability or
`
`unpatentability of an original or proposed substitute claim, and new evidence
`
`that could have been presented in a prior filing.”). Patent Owner argued that
`
`Petitioner changed “[t]he entire thrust of [its] argument” by arguing in its
`
`Petitions that the challenged claims were unpatentable based on a
`
`combination of two references, then proposing in its Reply that the second
`
`reference be modified based on a third reference before combining with the
`
`
`
`
`2
`
`
`
`
`
`IPR2016-01246
`Patent 7,126,174 B2
`
`first reference and explaining for the first time exactly how the cited
`
`references are to be combined. See Ex. 2057, 8:14–11:18 (characterizing
`
`Petitioner’s arguments as “A in view of B” versus “either A in view of B as
`
`modified by C, or just simply A in view of C”). Petitioner argued that its
`
`Reply arguments are proper because they respond to Patent Owner’s
`
`arguments regarding the combinability of the various references. See id. at
`
`19:12–21:6. We took the matter under advisement.
`
`After further consideration and review of the parties’ papers, we are
`
`not persuaded that a motion to strike the Reply and exhibits would be
`
`appropriate under the circumstances. A motion to strike is not, ordinarily, a
`
`proper mechanism for raising the issue of whether a reply or reply evidence
`
`is beyond the proper scope permitted under the rules. In the absence of
`
`special circumstance, we determine whether a reply and supporting evidence
`
`contain material exceeding the proper scope when we review all of the
`
`pertinent papers and prepare the final written decision. We may exclude all
`
`or portions of Petitioner’s Reply and newly submitted evidence, or decline to
`
`consider any improper argument and related evidence, at that time. We are
`
`not persuaded that the propriety of the Reply arguments and exhibits should
`
`be resolved prior to the final written decision and/or via formal briefing of a
`
`motion to strike, opposition, and reply. Should either party request a hearing
`
`(by DUE DATE 4 in the Scheduling Order (Paper 9)), however, the parties
`
`may address the issue further during oral argument.
`
`Finally, we note that Patent Owner inquired during the call as to
`
`whether it would be permitted to file a sur-reply. Petitioner stated that it
`
`would not oppose such a request. As the parties had not discussed the issue
`
`prior to the call, we deferred the matter until after deciding whether to grant
`
`
`
`
`3
`
`
`
`
`
`IPR2016-01246
`Patent 7,126,174 B2
`
`Patent Owner’s request for authorization to file a motion to strike. To the
`
`extent any further relief is requested, the parties may request another
`
`conference call. The parties should confer with each other regarding the
`
`details of the requested relief (e.g., page limit, timing, and scope of a
`
`sur-reply) prior to doing so.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Patent Owner is not authorized to file a motion to
`
`strike Petitioner’s Reply and exhibits filed with the Reply.
`
`
`
`
`
`
`4
`
`
`
`
`
`IPR2016-01246
`Patent 7,126,174 B2
`
`PETITIONER TAIWAN SEMICONDUCTOR MANUFACTURING
`COMPANY, LTD.:
`
`Darren M. Jiron
`E. Robert Yoches
`J. Preston Long
`Joshua L. Goldberg
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`darren.jiron@finnegan.com
`bob.yoches@finnegan.com
`jp.long@finnegan.com
`joshua.goldberg@finnegan.com
`
`
`PETITIONER GLOBALFOUNDRIES U.S. INC.:
`
`Kent Cooper
`LAW OFFICE OF KENT J. COOPER
`kent.cooper@kjcooperlaw.com
`
`Adam Floyd
`DORSEY & WHITNEY LLP
`floyd.adam@dorsey.com
`
`
`PATENT OWNER:
`
`Neil F. Greenblum
`Michael J. Fink
`Arnold Turk
`GREENBLUM & BERNSTEIN, P.L.C.
`ngreenblum@gbpatent.com
`mfink@gbpatent.com
`aturk@gbpatent.com
`
`
`
`
`
`
`
`5
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`
`
`
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