`571-272-7822
`
`
`
`
`Paper 28
`Entered: July 6, 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 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 30, 2017,
`
`among respective counsel for Petitioner Taiwan Semiconductor
`
`Manufacturing Company, Ltd. and Patent Owner Godo Kaisha IP Bridge 1,
`
`and Judges Arbes and Chagnon. The purpose of the call was to discuss
`
`Patent Owner’s request for authorization to file a sur-reply to Petitioner’s
`
`Reply (Paper 21) and for an extension to DUE DATES 4–6 in the
`
`Scheduling Order (Paper 9) should a sur-reply be authorized.
`
`Petitioner previously agreed to Patent Owner filing a sur-reply, see
`
`Paper 27, 3, but the parties were unable to reach agreement on the scope,
`
`word count, and timing of such briefing. Patent Owner requested
`
`authorization to file a sur-reply of up to 22,000 words (the same amount
`
`permitted for its Response in this proceeding) and new evidence, including a
`
`new declaration, by July 19, 2017. Patent Owner acknowledged that its
`
`request for 22,000 words was “highly unusual,” but argued that the amount
`
`was appropriate given the lengthy arguments made by Petitioner in its Reply
`
`and numerous exhibits submitted with the Reply. Petitioner agreed with
`
`Patent Owner’s proposed deadline during the call, but argued that (1) Patent
`
`Owner should only be permitted 1500 words because Patent Owner does not
`
`object to the entire Reply, (2) Patent Owner should not be permitted to file
`
`new evidence with its sur-reply, and (3) Petitioner should be authorized to
`
`file a sur-sur-reply.
`
`As discussed during the call and in an email to the parties on the same
`
`day, we authorized Patent Owner to file a sur-reply of up to 7000 words.
`
`See 37 C.F.R. §§ 42.5(a), 42.20(d). The requested sur-reply will be in
`
`response to Petitioner’s Reply, which is 8843 words and 51 pages. See
`
`Paper 21, 51. Patent Owner stated during the call that it did not object to
`
`
`
`
`2
`
`
`
`
`
`IPR2016-01246
`Patent 7,126,174 B2
`
`approximately “the last ten pages” of the Reply. See also Ex. 2057,
`
`14:21–15:1. A word count of 7000 words, therefore, corresponds roughly to
`
`the portion of the Reply to which Patent Owner objects. We are not
`
`persuaded that new evidence would be appropriate under the circumstances,
`
`given the substance of the parties’ arguments as well as the timing of this
`
`proceeding and our obligation to “secure the just, speedy, and inexpensive
`
`resolution of every proceeding.” See 37 C.F.R. § 42.1(b). A new
`
`declaration filed by Patent Owner, for instance, would require the
`
`opportunity for cross-examination and potentially further substantive
`
`briefing from Petitioner and/or motions for observations or to exclude. See
`
`Paper 9, 6 (oral argument scheduled for August 8, 2017, if requested by the
`
`parties). No further briefing other than the sur-reply is authorized at this
`
`time. Finally, we determined that Patent Owner had shown good cause for a
`
`one week extension to DUE DATES 4–6 to allow it time to prepare the
`
`sur-reply. See 37 C.F.R. § 42.5(c)(2).
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Patent Owner is authorized to file a sur-reply, limited
`
`to 7000 words, by July 19, 2017;
`
`FURTHER ORDERED that Patent Owner is not authorized to file
`
`new evidence with its sur-reply; and
`
`FURTHER ORDERED that DUE DATE 4 in the Scheduling Order
`
`(Paper 9) is changed to July 12, 2017, DUE DATE 5 is changed to July 26,
`
`2017, DUE DATE 6 is changed to August 2, 2017, and all other due dates
`
`are unchanged.
`
`
`
`
`
`
`3
`
`
`
`
`
`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
`
`
`
`
`
`
`
`4
`
`
`
`
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