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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, LTD.,
`Petitioner
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`
`Patent Owner
`
`
`Case IPR2016-012461
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`
` PETITIONER’S OPPOSITION TO MOTION TO EXCLUDE
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`
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`
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`1 Case IPR2016-01247 has been consolidated with this proceeding.
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`IPR2016-01246, IPR2016-01247
`Patent 7,126,174 B2
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Preliminary Statement .................................................................................. 1
`
`Standard ......................................................................................................... 1
`
`III. Exhibit 1014 Is Admissible, and Exhibits 2061 Through 2076
`Should Be Excluded ....................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`Patent Owner’s objection to Exhibit 1014 is irrelevant ........................ 1
`
`Patent Owner’s objection to Exhibit 1014 is untimely ......................... 3
`
`The Board should strike or exclude Patent Owner’s Exhibits
`2061-2076 submitted in support of its Motion to Exclude Ueda
`as irrelevant, improper. .......................................................................... 4
`
`IV. Exhibits 1032, 1034–1035, 1042–1043, 1055 and 1057–1058 are
`Relevant and Admissible ............................................................................... 5
`
`V.
`
`Exhibits 1003, 1005–1009, 1011–1014, 1016, 1018, 1025–1055 and
`1058, Submitted in Support of the Instituted Grounds But Not
`Alleged As Invalidating Prior Art, Are Relevant and Admissible ............ 6
`
`VI. Exhibits 1025–1055 and 1057–1058 Are Timely and Proper .................... 8
`
`VII. The Board Should Deny Patent Owner’s Backdoor Motion to
`Strike Petitioner’s Reply ............................................................................. 10
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`VIII. Conclusion .................................................................................................... 11
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`IPR2016-01246, IPR2016-01247
`Patent 7,126,174 B2
`
`
`TABLE OF AUTHORITIES
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`Federal Cases
`
` Page(s)
`
`Cross Med. Prod., Inc. v. Medtronic Sofamor Danek, Inc.,
`424 F.3d 1293 (Fed. Cir. 2005) ............................................................................ 2
`
`EMI Grp. N. Am., Inc. v. Cypress Semiconductor Corp.,
`268 F.3d 1342 (Fed. Cir. 2001) ............................................................................ 7
`
`Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin Pharm. Inc.,
`825 F.3d 1360 (Fed. Cir. 2016) ............................................................................ 7
`
`Lucent Techs., Inc. v. Gateway, Inc.,
`537 F. Supp. 2d 1095 (S.D. Cal. 2008) ................................................................ 2
`
`Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd.,
`357 F.3d 1319 (Fed. Cir. 2004) ............................................................................ 2
`
`Statutes
`
`35 U.S.C. § 103(c) ......................................................................................... 1, 2, 3, 4
`
`35 U.S.C. § 102(e) ..................................................................................................... 2
`
`Rules
`
`Fed. R. Evid. 401 ............................................................................................... 4, 6, 7
`
`Fed. R. Evid. 402 ............................................................................................... 4, 6, 7
`
`Fed. R. Evid. 403 ............................................................................................... 4, 6, 7
`
`Regulations
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`37 C.F.R. § 42.20 ................................................................................................... 1, 5
`
`37 C.F.R. § 42.64 ....................................................................................... 4, 5, 10, 11
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`37 C.F.R. § 42.123 ..................................................................................................... 5
`
`ii
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`
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`IPR2016-01246, IPR2016-01247
`Patent 7,126,174 B2
`
`
`Other Authorities
`
`
`ABB, Inc. v. Roy-G-Biv Corp., IPR2013-00063, Paper 71
`(P.T.A.B. May 16, 2014) .................................................................................... 11
`
`Corning Inc. v. DSM IP Assets B.V., IPR2013-00047, Paper 84
`(P.T.A.B. May 1, 2014) ...................................................................................... 11
`
`Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-
`00002, Paper 66 (P.T.A.B. Jan. 23, 2014) ........................................................... 1
`
`Toshiba Corp. v. Optical Devices, LLC, IPR2014-01447, Paper 34
`(P.T.A.B. Mar. 9, 2016) ....................................................................................... 9, 10
`
`iii
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`
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`IPR2016-01246, IPR2016-01247
`Patent 7,126,174 B2
`
`I.
`
`Preliminary Statement
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`Patent Owner seeks to exclude virtually all of Petitioner’s exhibits despite
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`their obvious relevance and admissibility, and despite the lack of any legal basis
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`for its motion. Such efforts run contrary to the Board’s rules, and granting any of
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`Patent Owner’s requested relief would contradict the Board’s interest in having a
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`complete record.
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`II.
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`Standard
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`As the movant, Patent Owner bears the burden of proving the challenged
`
`exhibits are inadmissible. 37 C.F.R. § 42.20(c); Liberty Mutual Ins. Co. v.
`
`Progressive Cas. Ins. Co., CBM2012-00002, Paper 66, at 59 (P.T.A.B. Jan. 23,
`
`2014). Patent Owner failed to meet that burden for any objection.
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`III. Exhibit 1014 Is Admissible, and Exhibits 2061 Through 2076 Should Be
`Excluded
`
`The Board should disregard Patent Owner’s allegation that Exhibit 1014
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`(“Ueda”) does not qualify as prior art under 35 U.S.C. § 103(c), see Paper 32, at 1–
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`6, because the objection is irrelevant and untimely.
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`A.
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`Patent Owner’s objection to Exhibit 1014 is irrelevant
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`Patent Owner’s theory that 35 U.S.C. § 103(c) justifies exclusion of Exhibit
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`1014 is both misguided and irrelevant to Petitioner’s use of Exhibit 1014.
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`Petitioner does not rely on Ueda as an invalidating reference under 35 U.S.C.
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`IPR2016-01246, IPR2016-01247
`Patent 7,126,174 B2
`
`§102(e). Rather, Petitioner uses Ueda to show that STI and LOCOS isolation were
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`known substitutes at the filing date of the ’174 patent, and that a POSITA at that
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`time would have wanted to and been able to interchange them. See, e.g., Paper 2
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`(IPR2016-01246), at 5–6, 21, 24–26, 70; Paper 2 (IPR2016-01247), at 5–6, 21, 24–
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`26, 62. Section 103(c) therefore does not apply.
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`Ueda’s status as §102(e) prior art is irrelevant because Petitioner uses it to
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`show a motivation to combine which “need not be in the form of prior art.”2 Cross
`
`Med. Prod., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1322 (Fed. Cir.
`
`2005); see also Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319,
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`1337–39 (Fed. Cir. 2004) (finding motivation to combine based on an unpublished
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`drawing by an engineer and a private disclosure thereof to engineering staff by a
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`marketing employee); Lucent Techs., Inc. v. Gateway, Inc., 537 F. Supp. 2d 1095,
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`1102 (S.D. Cal. 2008) (“Even if a document is not prior art, a Court may consider
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`it for motivation to combine.”). Petitioner also used Ueda to show a reasonable
`
`expectation of success and demonstrate the knowledge available to a POSITA, and
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`2 Although the law does not require the relevant disclosures of Ueda to have
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`been publicly available, they were. They were published on July 21, 1995. See
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`generally EX1030 (publication of Ueda’s parent Japanese application); EX1031
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`(certified translation of the same); see also Paper 21, at 3, 9.
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`2
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`IPR2016-01246, IPR2016-01247
`Patent 7,126,174 B2
`
`Patent Owner nowhere provides any legal citation that a reference must qualify as
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`prior art for those purposes. The Board should deny Petitioner’s motion to exclude
`
`Ueda.
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`B.
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`Patent Owner’s objection to Exhibit 1014 is untimely
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`Patent Owner did not timely notify Petitioner of its allegation that Ueda is
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`not prior art under pre-AIA 35 U.S.C. § 103(c). See Paper 32 at 1–5.
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`Patent Owner objected to Exhibit 1014 on January 17, 2017, on the grounds
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`that Ueda was filed after July 27, 1995. Paper 12, at 4. That objection is moot. In
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`the Institution Decision, the Board found, “[T]he challenged claims are not entitled
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`to the July 27, 1995 filing date of Japanese Patent Application No. 7-192181, such
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`that the earliest potential effective filing date would be December 19, 1995.” Paper
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`8, at 13 n.5. Patent Owner did not challenge the Board’s finding in its Patent
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`Owner’s Response (Paper 14), and Ueda was filed prior to December 19, 1995.
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`Patent Owner again objected to Exhibit 1014 on June 21, 2017, raising
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`several other objections, none of which suggested Patent Owner objected to
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`Exhibit 1014 due to an alleged common ownership under 35 U.S.C. § 103(c). See
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`Paper 26, at 3–4, 6–8. Even if such an objection had been made on June 21, 2017,
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`it would have been untimely. See 37 C.F.R. § 32.64(b)(1) (“Any objection to
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`evidence submitted during a preliminary proceeding must be filed within ten
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`business days of the institution of the trial.”).
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`3
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`IPR2016-01246, IPR2016-01247
`Patent 7,126,174 B2
`
`“[O]bjection[s] must identify the grounds for the objection with sufficient
`
`particularity to allow correction in the form of supplemental evidence.” 37 C.F.R.
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`§ 42.64(b). In addition, a motion to exclude “must identify the objections in the
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`record.” 37 C.F.R. § 42.64(c). Patent Owner never objected to Exhibit 1014 under
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`35 U.S.C. 103(c), see generally Paper 12, Paper 26, nor has Patent Owner
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`identified any such objection in the record,3 see generally Paper 32.
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`Patent Owner’s unrelated objections to Exhibit 1014 should not open the
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`door to exclusion based on a new allegation that Exhibit 1014 and the challenged
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`patent were commonly owned. The Board should not exclude Exhibit 1014.
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`C. The Board should strike or exclude Patent Owner’s Exhibits
`2061-2076 submitted in support of its Motion to Exclude Ueda as
`irrelevant, improper.
`
`Exhibits 2061 through 2076 are irrelevant to any material facts at issue, and
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`any probative value Patent Owner may try to assign them is substantially
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`outweighed by their tendency to confuse the issues, mislead the Board, and waste
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`time, making them inadmissible under Fed. R. Evid. 401, 402, and 403. Patent
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`Owner did not submit these exhibits to cure an evidentiary objection, and did not
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`seek the Board’s permission to submit supplemental information. See 37 C.F.R.
`
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`3 The only identification of Patent Owner’s objections is a generic reference
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`to Paper 12 and Paper 26. See Paper 32, at 1.
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`4
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`IPR2016-01246, IPR2016-01247
`Patent 7,126,174 B2
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`§§ 42.20, 42.123. Instead, Patent Owner identified these exhibits for the first time
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`in its motion to exclude (Paper 32). Petitioner timely objected to Patent Owner’s
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`16 new exhibits on July 19, 2017, in accordance with 37 C.F.R. § 42.64(b)(1).
`
`Exhibits 2061 through 2076 are inadmissible because Patent Owner relies on
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`them solely to support its irrelevant allegation that Ueda was commonly owned
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`with the ’174 patent. See Paper 32, at 1–7. In addition, the Board should strike (or
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`at least exclude) those exhibits from the record because Patent Owner should have
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`presented its evidence of co-ownership in its Patent Owner Response (Paper 14).
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`IV. Exhibits 1032, 1034–1035, 1042–1043, 1055 and 1057–1058 are Relevant
`and Admissible
`
`Patent Owner alleges Petitioner “admitted” the references are cumulative by
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`partially quoting Petitioner’s Reply, see Paper 32, at 6, but Patent Owner ignores
`
`Petitioner’s statements that “several references demonstrate the techniques in
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`Ueda, Mandelman, and the admitted prior art had been known and used for over a
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`decade” and that “these additional cited references. . . confirm what a POSITA
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`would have known, and contradict Patent Owner’s assertions about the need to
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`form the gate layers before the STI.” Paper 21 at 17. The references are thus
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`evidence that claimed features were well-known, and are probative of what a
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`POSITA would have known at the time.
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`5
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`IPR2016-01246, IPR2016-01247
`Patent 7,126,174 B2
`
`Such evidence is neither cumulative nor irrelevant. Not only does each
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`exhibit differ, but the exhibits collectively show that certain information had been
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`known for a long time. Patent Owner has not explained what unfair prejudice or
`
`confusion these exhibits present, particularly in view of Patent Owner’s
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`opportunity to address these exhibits on their merits in Sur-reply.4 See Paper 28, at
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`2 (permitting Patent Owner to address the “numerous exhibits submitted with the
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`Reply”); see also generally Paper 37. Because Patent Owner has not shown any of
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`the concerns underlying Fed. R. Evid. 401 through 403 exist here, the Board
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`should deny Patent Owner’s motion to exclude exhibits 1032, 1034–1035, 1042–
`
`1043, 1055 and 1057–1058.
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`V. Exhibits 1003, 1005–1009, 1011–1014, 1016, 1018, 1025–1055 and 1058,
`Submitted in Support of the Instituted Grounds But Not Alleged As
`Invalidating Prior Art, Are Relevant and Admissible
`
`Patent Owner alleges that “Exhibits 1003, 1005–1009, 1011–1014, 1016,
`
`1018, 1025–1055 and 1058 should be excluded because they are not alleged to be
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`invalidating prior art,” and similarly, “Exhibits 1049 and 1051 should be excluded
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`because they “post-date the invention.” Paper 32 at 8–9.
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`As the Board noted, “Petitioner’s citations to the other references . . .
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`appropriately show the background knowledge that a person of ordinary skill in the
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`4 It chose not to do so. See generally Paper 37.
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`6
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`IPR2016-01246, IPR2016-01247
`Patent 7,126,174 B2
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`art would have had in reading Lee and Noble, and why a person of ordinary skill in
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`the art would have been motivated to make the asserted combination.” Paper 8 at
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`13 n.5. The Federal Circuit allows the Board to “consider a prior art reference to
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`show the state of the art at the time of the invention, regardless of whether the
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`reference was cited in the Board’s institution decision.” Genzyme Therapeutic
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`Prod. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1369 (Fed. Cir. 2016);
`
`see also id. at 1367–68 (rejecting the argument that references “not among the
`
`combinations of references on which the Board granted review” may not be used
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`as evidence of reasonable expectation of success).
`
`Regarding Exhibits 1049 and 1051, a reference that does not qualify as prior
`
`art may provide evidence of an inherent property. EMI Grp. N. Am., Inc. v. Cypress
`
`Semiconductor Corp., 268 F.3d 1342, 1349–51 (Fed. Cir. 2001) (reversing a
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`district court’s grant of JMOL because the district court erroneously equated
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`inherency with a need for one of skill in the art to recognize the inherent property
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`at the time of invention). Exhibits 1049 and 1051 provide post-invention evidence
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`confirming that phosphorous would have been present (and detectable) in Lowrey’s
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`L-shaped sidewalls. Paper 21 at 41–42. Exhibits 1049 and 1051 need not qualify as
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`prior art to be used for this purpose.
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`Patent Owner has not shown the presence of any of the concerns underlying
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`Fed. R. Evid. 401 through 403 exist, such as prejudice to the Patent Owner or
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`7
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`IPR2016-01246, IPR2016-01247
`Patent 7,126,174 B2
`
`possible confusion by the Board would be confused or waste time in considering
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`the Exhibits. The Board should therefore deny Patent Owner’s motion to exclude
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`exhibits 1003, 1005–1009, 1011–1014, 1016, 1018, 1025–1055 and 1058.
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`VI. Exhibits 1025–1055 and 1057–1058 Are Timely and Proper
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`Patent Owner objects to Exhibits 1025–1055 and 1057–1058 submitted with
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`Petitioner’s Reply as not “respond[ing] to arguments raised in the corresponding
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`opposition or patent owner response.” Paper 32 at 10.
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`Each of Exhibits 1025–1055 and 1057–1058 responds to one or more
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`arguments Patent Owner presented in its Response (Paper 14). The table below
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`explains how Petitioner used the evidence. The evidence in the left column
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`responds to Patent Owner’s allegation that “it is not possible to follow
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`[Lee’s/Lowrey’s] process by simply substituting Noble and Ogawa’s trench
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`isolation for Lee’s LOCOS isolation.” Paper 14, at 64, 114–15. The evidence in the
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`middle column responds to Patent Owner’s allegation that “it is not possible to
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`simply start with Noble or Ogawa’s trench isolation without first forming the gate
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`dielectric and gate conductor.” Paper 14, at 64–65, 115–16. The evidence in the
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`right column responds at least to one or more of Patent Owner’s other allegations
`
`(e.g., Lowrey does not disclose L-shaped sidewalls and Lee does not contain
`
`silicide). See, e.g., Paper 14, at 79–81, 102–04.
`
`8
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`
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`IPR2016—01246, IPR2016—01247
`
`Patent 7,126,174 B2
`
`Substitutability
`of STI and
`
`LOCOS Isolation
`
`Making STI Without Using
`the Gate Stack
`
`Other Rebuttal Ev1dence
`
`oEX1025 (Adler)
`
`oEX1026/EX1027 (Sumi)5
`
`oEX1036 (Chen)
`
`. EX1046 (Wolf & . EX1028/EX1029 (Horiguchi)6
`
`. EX1038 (Ma)
`
`o EX 1 054 (NTRS)
`
`Tauber, vol. 2)
`
`o EX1030/EX1031 (Ueda JP)7
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`0 EX1039 (Manukonda)
`
`oEX1047 (Fry)
`o EX1048 (Poon)
`o EX1052
`
`(Kurosawa)
`
`o EX1053 (Kang)
`
`oEX1032/EX1033/ EX1034
`(K‘maka and JP WWW“)
`° EX1035 (KOdera)
`°EX1037 (Gamer)
`o EX1042 (Deleonibus)
`
`.EX1040 (Hiroki)
`. EX1041 (Kusunoki)
`o EX1044 (Chang & SZC)
`oEX1045 (Wolf& Tauber,
`vol. 1)
`
`o EX1043 (Pierce)
`
`0 EX1049 (Clement)
`
`o EX1055 (Davari)
`
`o EX1050 (Pantel)
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`o EX1058 (Dash)8
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`0 EX1051 (Servanton)
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`The facts here differ from Toshiba Corp. v. Optical Devices, LLC, IPR2014-
`
`01447, Paper 34 (P.T.A.B. Mar. 9, 2016), which Patent Owner cites. See Paper 32,
`
`at 10—12. In Toshiba, the Board excluded evidence the Petitioner submitted in its
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`5 Cited on the face of the ’ 174 patent.
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`6 Cited on the face of the ’ 174 patent.
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`7 Publication of JPH 05-284820, a priority document for Ueda, confirming the
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`portions of Ueda Petitioner’s cited had been published as of July 21, 1995.
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`8 Incorporated by reference by Noble for teaching “STI and processes for forming
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`STI.” EX1015 at 3:35—37.
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`
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`IPR2016-01246, IPR2016-01247
`Patent 7,126,174 B2
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`Reply to support its argument that an allegedly invalidating prior art reference was
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`publically accessible at the time of invention. The Patent Owner objected because
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`the Petitioner never served or filed this additional evidence under 37 C.F.R.
`
`§ 42.64(b)(2) in response to Patent Owner’s objections, and instead waited until
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`the Reply to file them, denying Patent Owner an opportunity to comment on them.
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`See Toshiba, IPR2014-01447, Paper 34, at 44–45.
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`Here, Petitioner did not submit Exhibits 1025–1055 and 1057–1058 to cure
`
`evidentiary deficiencies but instead to support arguments Patent Owner raised in its
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`Response, and IPB had an opportunity to respond to the new Exhibits in its Sur-
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`reply, an opportunity it declined to take. See Paper 28, at 2 (permitting Patent
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`Owner to address the “numerous exhibits submitted with the Reply”); see also
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`generally Paper 37.
`
`For each of these reasons, the Board should deny Patent Owner’s Request to
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`exclude Exhibits 1025–1055 and 1057–1058.
`
`VII. The Board Should Deny Patent Owner’s Backdoor Motion to Strike
`Petitioner’s Reply
`
`The Board should once again deny Patent Owner’s request to strike
`
`Petitioner’s Reply (Paper 32, at 14) because it already denied the same motion,
`
`Patent Owner’s request for a Motion to Strike (Paper 27), and gave Patent Owner a
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`Sur-reply.
`
`10
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`
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`IPR2016-01246, IPR2016-01247
`Patent 7,126,174 B2
`
`A motion under 37 C.F.R. § 42.64(c) is also an improper vehicle for seeking
`
`to strike a reply, as such a motion “normally is not the proper vehicle for resolution
`
`of a dispute regarding reply arguments and evidence exceeding the proper scope of
`
`a reply.” ABB, Inc. v. Roy-G-Biv Corp., IPR2013-00063, Paper 71, at 13–14
`
`(P.T.A.B. May 16, 2014); Corning Inc. v. DSM IP Assets B.V., IPR2013-00047,
`
`Paper 84, at 7 n.3 (P.T.A.B. May 1, 2014).
`
`VIII. Conclusion
`For the reasons stated herein, the Board should deny Patent Owner’s motion,
`
`and also strike (or at least exclude) Patent Owner’s Exhibits 2061 through 2076.
`
`Dated: July 26, 2017
`
`Respectfully submitted,
`
`
`
`
`
`By: /Darren M. Jiron/
`Darren M. Jiron
`Reg. No. 45,777
`
`Lead Counsel for Petitioner
`
`11
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that I served a true and
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`correct copy of the PETITIONER’S OPPOSITION TO MOTION TO
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`EXCLUDE by electronic mail, on this 26th day of July, 2017, on counsel of
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`record for the Patent Owner as follows:
`
`
`Neil F. Greenblum
`ngreenblum@gbpatent.com
`
`Michael J. Fink
`mfink@gbpatent.com
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`Arnold Turk
`aturk@gbpatent.com
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`
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`Patent Owner has agreed to electronic service.
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`Dated: July 26, 2017
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`By: /Lauren K. Young/
`Lauren K. Young
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
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