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Case IPR2016-01246 for
`U.S. Patent No. 7,126,174
`
`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 LIMITED,
`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 REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`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.
`
`

`

`Case IPR2016-01246 for
`U.S. Patent No. 7,126,174
`
`I.
`
`PATENT OWNER’S OBJECTION TO EXHIBIT 1014 IS
`TIMELY AND THE EXHIBIT SHOULD BE EXCLUDED
`
`Petitioner asserts that Patent Owner’s objection to Ueda is irrelevant because
`
`Ueda is not being relied upon under 35 U.S.C. 102(e). Paper 40, pp. 1-2.
`
`Petitioner changed its grounds of reliance on Ueda. It initially relied at
`
`pages 21, 25, and 70 on col. 22: l. 22:49-52 for the general proposition that the
`
`invention of Ueda could be applied to trench systems as well as LOCOS systems.
`
`Petitioner never relied upon Ueda to teach that its trench system could be
`
`substituted into LOCOS systems. However, in its Reply (Paper 21), Petitioner
`
`eliminates Noble and Ogawa and specifically noted: “Instead of LOCOS, raised
`
`STI 113 (of Lee) is formed by any of the well-known processes discussed above.
`
`Id.” Reply, p. 19. Petitioner points to Ueda as one of the “well known” processes
`
`specified and it relies upon Fig. 12(c) of Exhibit 1014. Reply, p. 16.
`
`Once Petitioner argued substituting the actual trench of Ueda into Lee, this
`
`became an argument for invalidity under 35 U.S.C. 103/102(e) regardless of how
`
`Petitioner chooses to characterize it. The Reply was the first time that such an
`
`argument was made.
`
`Patent Owner requested leave to strike the entire Reply, in part based upon
`
`the assertion on p. 19 of the Reply. Exhibit 2057, 10:17-11:8.
`
`
`
`1
`
`

`

`Case IPR2016-01246 for
`U.S. Patent No. 7,126,174
`
`In footnote 2 of Paper 40, Petitioner points for the first time to Exhibits 1030
`
`and 1031 as evidence that Ueda was otherwise publicly available. Petitioner does
`
`not establish that the documents are the same. The language upon which the Board
`
`relied (Ueda (Exhibit 1014), 22:49-52) does not seem to appear in Ex. 1030/1031.
`
`In light of the reliance on Ueda in the Reply having morphed into an argument of
`
`invalidity under 35 U.S.C. 102(e)/103, the Motion to Exclude is not irrelevant.
`
`Based on Patent Owner’s original objection, Petitioner knew that the date of
`
`Ueda was being challenged because it served Japanese Patent Application No.
`
`JPH07183518A to Ueda et al. (served as Exhibits 1025 and 1026, but filed as
`
`Exhibits 1030 and 1031) on January 31, 2017 in response to Patent Owner’s
`
`Objections to Evidence (Paper 12).
`
`There was no need to challenge the availability of Ueda under 35 U.S.C.
`
`102(e)/103 based upon the Petition since it was relied only as background state of
`
`the art. However, once the Reply relied upon Ueda, amongst others, as the basis of
`
`a 102(e)/103 rejection, it became appropriate to challenge the availability of Ueda
`
`as a reference. Reply, p. 19. An objection was filed on June 21, 2017. Paper 26.
`
`II. EXHIBITS 2061-2076 ARE NOT IRRELEVANT OR IMPROPER
`
`Exhibits 2061-2076 are not irrelevant or improper for the reasons noted
`
`above. Patent Owner asserted common ownership as a basis for eliminating Ueda
`
`
`
`2
`
`

`

`Case IPR2016-01246 for
`U.S. Patent No. 7,126,174
`
`as a reference, supplying Exhibits 2061-2076 in support thereof. Petitioner has not
`
`otherwise challenged these Exhibits or Patent Owner’s position.
`
`III. EXHIBITS 1032, 1034-1035, 1042 -1043, 1055 AND 1057-1058
`SHOULD BE EXCLUDED
`
`It is simply impossible for Petitioner to maintain a consistent position on the
`
`numerous new Exhibits. The Reply maintained that the additional references were
`
`“duplicative” and “non-essential.” Reply p. 17. Petitioner now maintains that they
`
`“differ.” Paper 40, p. 6.
`
`The entire basis of the Petition was Lowrey/Lee v. Noble/Ogawa. These
`
`newly cited references confuse the record such that it is impossible to pin down
`
`exactly what Petitioner’s position is. Petitioner itself cannot maintain a single
`
`consistent position on the issue.
`
`Patent Owner has had no fair opportunity to have its Expert assess and
`
`respond to the applicability of any of these references, given the briefing
`
`constraints placed upon it by the Board Order, which stated that “Patent Owner is
`
`not authorized to file new evidence with its sur-reply.” Paper 28, p. 3.
`
`Petitioner is impermissibly relying upon these additional Exhibits in order to
`
`shift its position away from its original grounds of rejection, and to incorporate
`
`these new Exhibits to form a new rejection. The Exhibits are irrelevant and confuse
`
`the issues, and should be excluded.
`
`
`
`3
`
`

`

`Case IPR2016-01246 for
`U.S. Patent No. 7,126,174
`
`IV. EXHIBITS 1003, 1005-1009, 1011-1014,1016,1018,1025-1055 AND 1058
`SHOULD BE EXCLUDED
`
`The Exhibits should be excluded for the reasons stated in Patent Owner’s
`
`Motion to Exclude (Paper 32). As to Exhibits 1049 and 1051, the Reply fails to
`
`establish that phosphorous would have been present in a detectable amount in
`
`Lowrey’s L-shaped sidewalls. Dr. Banerjee confirmed that he did not know
`
`whether the threshold values of the equipment he cited were enough to render
`
`visible an L-shaped member. Exhibit 2078, 275:11-277:2. He also did not know
`
`the level of doping into the sidewalls. Id., 277:17-278:3. As such, pointing to
`
`equipment, which cannot be established to visualize the unknown levels of dopant
`
`because the thresholds of measurement are unknown, has no probative value.
`
`In addition to having no probative value, Exhibits 1049 and 1051 are further
`
`irrelevant because they have dates after the relevant date.
`
`V. EXHIBITS 1025-1055 AND 1057-1058 SHOULD BE EXCLUDED
`
`In Response to Patent Owner’s Motion to Exclude, Petitioner has now
`
`provided a matrix chart intended to show how their new evidence is to be used.
`
`Petitioner ignores its allegations in its Reply that the newly cited references are
`
`duplicative and non-essential. They should all be excluded if only for this reason.
`
`Petitioner has now classified and characterized its 27 references in a chart
`
`without explanation as to how any of these relate to the rejections in its Petitions or
`
`
`
`4
`
`

`

`Case IPR2016-01246 for
`U.S. Patent No. 7,126,174
`
`the Decision to Institute. The chart was apparently included so it could be used as
`
`a demonstrative (making the chart of record, and thus usable as a demonstrative).
`
`Once again, footnote 7 alludes to Ex. 1031 as confirming the portions of
`
`Ueda, which were cited by Petitioner, with no accompanying comparison of the
`
`two texts. Ueda, 22:49-52, cited by Petitioner and relied upon by the Board in its
`
`Decision to Institute (Paper 8) has not been shown to appear in Exhibits
`
`1030/1031.
`
`Petitioner’s argument that it did not earlier submit these Exhibits, but only
`
`did so to support arguments raised in the Response, strains credulity. Petitioner
`
`never explained how it proposed to meld the teachings of Lee/Lowrey with the
`
`embedded trenches of Noble/Ogawa. Its response was to rely on tens of new
`
`exhibits suggesting how a POSITA would substitute their unembedded trenches
`
`into the primary references. This amounted to entirely new grounds of rejection,
`
`not merely a substantiation of the previous grounds upon which trial was instituted.
`
`The Exhibits are irrelevant and confuse the issues, and should be excluded.
`
`VI. THE BOARD SHOULD EXCLUDE THE REPLY
`
`The Reply itself very substantially relies upon the above objectionable
`
`documents and for this reason should be excluded or not considered. It is virtually
`
`impossible to ferret out “new” arguments singularly responsive to the Response.
`
`
`
`5
`
`

`

`Dated: August 2, 2017
`
`
`
`
`
` Respectfully submitted:
`
`Case IPR2016-01246 for
`U.S. Patent No. 7,126,174
`
`
`
`
`/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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`{J709902 03194973.DOC}
`
`

`

`Case IPR2016-01246 for
`U.S. Patent No. 7,126,174
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true copy of the foregoing:
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`was served by electronic mail on this 2nd day of August, 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 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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