`U.S. Patent No. 7,126,174
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`Filed on behalf of Godo Kaisha IP Bridge 1
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`By: Neil F. Greenblum (ngreenblum@gbpatent.com)
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`Greenblum & Bernstein, P.L.C.
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`1950 Roland Clarke Place
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`Reston, VA 20191
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`Tel: 703-716-1191
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`Fax: 703-716-1180
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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 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
`____________
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`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
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`
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`1 Case IPR2016-01247 has been consolidated with this proceeding.
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`GlobalFoundries U.S. Inc.’s motions for joinder in Cases IPR2017-00925 and
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`IPR2017-00926 were granted.
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`
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`Case IPR2016-01246 for
`U.S. Patent No. 7,126,174
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`I.
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`PATENT OWNER’S OBJECTION TO EXHIBIT 1014 IS
`TIMELY AND THE EXHIBIT SHOULD BE EXCLUDED
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`Petitioner asserts that Patent Owner’s objection to Ueda is irrelevant because
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`Ueda is not being relied upon under 35 U.S.C. 102(e). Paper 40, pp. 1-2.
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`Petitioner changed its grounds of reliance on Ueda. It initially relied at
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`pages 21, 25, and 70 on col. 22: l. 22:49-52 for the general proposition that the
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`invention of Ueda could be applied to trench systems as well as LOCOS systems.
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`Petitioner never relied upon Ueda to teach that its trench system could be
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`substituted into LOCOS systems. However, in its Reply (Paper 21), Petitioner
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`eliminates Noble and Ogawa and specifically noted: “Instead of LOCOS, raised
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`STI 113 (of Lee) is formed by any of the well-known processes discussed above.
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`Id.” Reply, p. 19. Petitioner points to Ueda as one of the “well known” processes
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`specified and it relies upon Fig. 12(c) of Exhibit 1014. Reply, p. 16.
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`Once Petitioner argued substituting the actual trench of Ueda into Lee, this
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`became an argument for invalidity under 35 U.S.C. 103/102(e) regardless of how
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`Petitioner chooses to characterize it. The Reply was the first time that such an
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`argument was made.
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`Patent Owner requested leave to strike the entire Reply, in part based upon
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`the assertion on p. 19 of the Reply. Exhibit 2057, 10:17-11:8.
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`Case IPR2016-01246 for
`U.S. Patent No. 7,126,174
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`In footnote 2 of Paper 40, Petitioner points for the first time to Exhibits 1030
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`and 1031 as evidence that Ueda was otherwise publicly available. Petitioner does
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`not establish that the documents are the same. The language upon which the Board
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`relied (Ueda (Exhibit 1014), 22:49-52) does not seem to appear in Ex. 1030/1031.
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`In light of the reliance on Ueda in the Reply having morphed into an argument of
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`invalidity under 35 U.S.C. 102(e)/103, the Motion to Exclude is not irrelevant.
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`Based on Patent Owner’s original objection, Petitioner knew that the date of
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`Ueda was being challenged because it served Japanese Patent Application No.
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`JPH07183518A to Ueda et al. (served as Exhibits 1025 and 1026, but filed as
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`Exhibits 1030 and 1031) on January 31, 2017 in response to Patent Owner’s
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`Objections to Evidence (Paper 12).
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`There was no need to challenge the availability of Ueda under 35 U.S.C.
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`102(e)/103 based upon the Petition since it was relied only as background state of
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`the art. However, once the Reply relied upon Ueda, amongst others, as the basis of
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`a 102(e)/103 rejection, it became appropriate to challenge the availability of Ueda
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`as a reference. Reply, p. 19. An objection was filed on June 21, 2017. Paper 26.
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`II. EXHIBITS 2061-2076 ARE NOT IRRELEVANT OR IMPROPER
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`Exhibits 2061-2076 are not irrelevant or improper for the reasons noted
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`above. Patent Owner asserted common ownership as a basis for eliminating Ueda
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`Case IPR2016-01246 for
`U.S. Patent No. 7,126,174
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`as a reference, supplying Exhibits 2061-2076 in support thereof. Petitioner has not
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`otherwise challenged these Exhibits or Patent Owner’s position.
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`III. EXHIBITS 1032, 1034-1035, 1042 -1043, 1055 AND 1057-1058
`SHOULD BE EXCLUDED
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`It is simply impossible for Petitioner to maintain a consistent position on the
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`numerous new Exhibits. The Reply maintained that the additional references were
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`“duplicative” and “non-essential.” Reply p. 17. Petitioner now maintains that they
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`“differ.” Paper 40, p. 6.
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`The entire basis of the Petition was Lowrey/Lee v. Noble/Ogawa. These
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`newly cited references confuse the record such that it is impossible to pin down
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`exactly what Petitioner’s position is. Petitioner itself cannot maintain a single
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`consistent position on the issue.
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`Patent Owner has had no fair opportunity to have its Expert assess and
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`respond to the applicability of any of these references, given the briefing
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`constraints placed upon it by the Board Order, which stated that “Patent Owner is
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`not authorized to file new evidence with its sur-reply.” Paper 28, p. 3.
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`Petitioner is impermissibly relying upon these additional Exhibits in order to
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`shift its position away from its original grounds of rejection, and to incorporate
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`these new Exhibits to form a new rejection. The Exhibits are irrelevant and confuse
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`the issues, and should be excluded.
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`Case IPR2016-01246 for
`U.S. Patent No. 7,126,174
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`IV. EXHIBITS 1003, 1005-1009, 1011-1014,1016,1018,1025-1055 AND 1058
`SHOULD BE EXCLUDED
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`The Exhibits should be excluded for the reasons stated in Patent Owner’s
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`Motion to Exclude (Paper 32). As to Exhibits 1049 and 1051, the Reply fails to
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`establish that phosphorous would have been present in a detectable amount in
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`Lowrey’s L-shaped sidewalls. Dr. Banerjee confirmed that he did not know
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`whether the threshold values of the equipment he cited were enough to render
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`visible an L-shaped member. Exhibit 2078, 275:11-277:2. He also did not know
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`the level of doping into the sidewalls. Id., 277:17-278:3. As such, pointing to
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`equipment, which cannot be established to visualize the unknown levels of dopant
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`because the thresholds of measurement are unknown, has no probative value.
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`In addition to having no probative value, Exhibits 1049 and 1051 are further
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`irrelevant because they have dates after the relevant date.
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`V. EXHIBITS 1025-1055 AND 1057-1058 SHOULD BE EXCLUDED
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`In Response to Patent Owner’s Motion to Exclude, Petitioner has now
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`provided a matrix chart intended to show how their new evidence is to be used.
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`Petitioner ignores its allegations in its Reply that the newly cited references are
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`duplicative and non-essential. They should all be excluded if only for this reason.
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`Petitioner has now classified and characterized its 27 references in a chart
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`without explanation as to how any of these relate to the rejections in its Petitions or
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`Case IPR2016-01246 for
`U.S. Patent No. 7,126,174
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`the Decision to Institute. The chart was apparently included so it could be used as
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`a demonstrative (making the chart of record, and thus usable as a demonstrative).
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`Once again, footnote 7 alludes to Ex. 1031 as confirming the portions of
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`Ueda, which were cited by Petitioner, with no accompanying comparison of the
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`two texts. Ueda, 22:49-52, cited by Petitioner and relied upon by the Board in its
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`Decision to Institute (Paper 8) has not been shown to appear in Exhibits
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`1030/1031.
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`Petitioner’s argument that it did not earlier submit these Exhibits, but only
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`did so to support arguments raised in the Response, strains credulity. Petitioner
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`never explained how it proposed to meld the teachings of Lee/Lowrey with the
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`embedded trenches of Noble/Ogawa. Its response was to rely on tens of new
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`exhibits suggesting how a POSITA would substitute their unembedded trenches
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`into the primary references. This amounted to entirely new grounds of rejection,
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`not merely a substantiation of the previous grounds upon which trial was instituted.
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`The Exhibits are irrelevant and confuse the issues, and should be excluded.
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`VI. THE BOARD SHOULD EXCLUDE THE REPLY
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`The Reply itself very substantially relies upon the above objectionable
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`documents and for this reason should be excluded or not considered. It is virtually
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`impossible to ferret out “new” arguments singularly responsive to the Response.
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`Dated: August 2, 2017
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` Respectfully submitted:
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`Case IPR2016-01246 for
`U.S. Patent No. 7,126,174
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`
`
`
`/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
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`{J709902 03194973.DOC}
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`Case IPR2016-01246 for
`U.S. Patent No. 7,126,174
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of the foregoing:
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`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
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`was served by electronic mail on this 2nd day of August, 2017, upon Counsel for
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`Petitioner, as follows:
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`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).
`
`
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`/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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