`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`
`Patent Owner.
`
`
`Case IPR2016-012461
`Patent 7,126,174 B2
`
`
` PETITIONER’S REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`
`
`1 Case IPR2016-01247 has been consolidated with this proceeding.
`
`
`
`
`
`
`
`IPR2016-01246, IPR2016-01247
`Patent 7,126,174 B2
`
`
`TABLE OF CONTENTS
`
`I.
`
`The Board Should Exclude Paragraphs 33-159 of Exhibit 2001,
`Paragraphs 33-149 of Exhibit 2011, and Paragraphs 4-10 and 35-
`458 of Exhibit 2012 as Unreliable Expert Testimony ................................. 1
`
`II. The Board Should Exclude Exhibits 2002-2010, 2013-2019, 2026-
`2030, 2032, and 2033 as Irrelevant ............................................................... 2
`
`A.
`
`B.
`
`Exhibits 2002, 2003, 2004, 2032, and 2033 are Irrelevant ................... 2
`
`Exhibits 2005, 2006, 2007, 2008, 2009, 2010, 2013, 2014,
`2015, 2016, 2017, 2018, and 2019 are Irrelevant ................................. 3
`
`C.
`
`Exhibit 2026, 2027, 2028, 2029, and 2030 are Irrelevant ..................... 3
`
`III. The Board Should Exclude Exhibits 2003, 2004, and 2026 as
`Hearsay ........................................................................................................... 4
`
`IV. Conclusion ...................................................................................................... 5
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01246, IPR2016-01247
`Patent 7,126,174 B2
`
`I.
`
`The Board Should Exclude Paragraphs 33-159 of Exhibit 2001,
`Paragraphs 33-149 of Exhibit 2011, and Paragraphs 4-10 and 35-458 of
`Exhibit 2012 as Unreliable Expert Testimony
`
`Patent Owner wrongly argues Petitioner originally objected to Dr.
`
`Schubert’s qualifications as an expert only as to doping issues. Paper 39 at 1.
`
`Petitioner objected to Dr. Schubert because he lacked significant experience with
`
`“LDD Si MOSFET devices” and “designing and making LDD Si MOSFET
`
`devices,” highlighting that the vast majority of his experience was “with III-V
`
`compound semiconductors and light-emitting devices.” Paper 16 at 3. Petitioner’s
`
`obviousness challenges focus on device-isolation structures for silicon MOSFETs,
`
`and do not implicate doping (nor do Dr. Schubert’s opinions).
`
`After Petitioner objected to Dr. Schubert’s lack of relevant experience,
`
`Patent Owner imagined Dr. Schubert “would have . . . explained” his experience
`
`with STI had Petitioner asked different questions. Paper 39, at 5-7. Dr. Schubert
`
`had every opportunity to explain his alleged expertise during his deposition, but he
`
`could not articulate any experience with STI other than a general awareness of it.
`
`EX1056 at 67:18-71:14.
`
`Patent Owner now tries to supplement the record (Paper 39, at 5-7), but it is
`
`too late to amend his CV, and Patent Owner has no right to invent testimony from
`
`its expert that Petitioner cannot explore while he is under oath. In addition, the
`
`“experience” Patent Owner seeks to add is noteworthy for its shallowness. Patent
`
`
`
`
`
`
`
`
`IPR2016-01246, IPR2016-01247
`Patent 7,126,174 B2
`
`Owner points to two projects in Dr. Schubert’s CV centered on “demonstration” of
`
`doping results, but the mere fact the ICs in these demonstrations included LOCOS
`
`or trench isolation does not mean Dr. Schubert had any expertise in device
`
`isolation. Even with Patent Owner’s supplementation, Dr. Schubert is unqualified
`
`to opine on the substitutability of STI for LOCOS isolation in silicon MOSFET
`
`devices.2
`
`II. The Board Should Exclude Exhibits 2002-2010, 2013-2019, 2026-2030,
`2032, and 2033 as Irrelevant
`A. Exhibits 2002, 2003, 2004, 2032, and 2033 are Irrelevant
`Patent Owner argues that exhibits 2002, 2003, 2004, 2032, and 2033 are
`
`relevant to a particular method of polishing (CMP) (Paper 39, at 8-9), but the ’174
`
`patent explains how to use other planarization methods besides CMP to make the
`
`claimed structures, as Petitioner explained (Paper 29, at 7 n.4) and Patent Owner
`
`failed to address. Additionally, in the substantive briefing, Patent Owner never
`
`cited Exhibit 2002 or 2003, and efforts to explain their relevance now is improper
`
`
`2 Patent Owner’s accusation that Petitioner misrepresented the record (see
`
`Paper 39, at 2) is baseless. Petitioner properly supported its statement by citing
`
`seven paragraphs of Petitioner’s expert declaration (EX1057, at ¶¶ 83-89), as well
`
`as passages of the Petition (Paper 2, at 21, 70) defining an obviating structure that
`
`IPB failed to address in its Response.
`
`2
`
`
`
`
`
`IPR2016-01246, IPR2016-01247
`Patent 7,126,174 B2
`
`supplemental briefing the Board should ignore. Exhibits 2002, 2003, 2004, 2032,
`
`and 2033 should be excluded.
`
`B.
`
`Exhibits 2005, 2006, 2007, 2008, 2009, 2010, 2013, 2014, 2015,
`2016, 2017, 2018, and 2019 are Irrelevant
`
`Patent Owner argues it cited Exhibits 2005-10 and 2013-19 to show
`
`“semiconductor manufacture is highly complex.” Paper 39 at 9-10. Petitioner,
`
`though, made a different point in its objections, which is that these exhibits have
`
`nothing to do with the central issue in this case, substituting STI for LOCOS
`
`isolation in the Lee and Lowrey device structures. See, e.g., Paper 29, at 7-10.
`
`Whether semiconductor technology in all its manifold forms is “complex” has
`
`nothing to do with Petitioner’s specific obviousness combinations. Exhibits 2005-
`
`10 and 2013-19 provide no evidence a POSITA would have had difficulty making
`
`a straight-forward substitution of STI for LOCOS isolation, and Patent Owner does
`
`not argue they do. These exhibits are more likely to waste the Board’s time and
`
`confuse issues than assist the Board in deciding the salient issues, so the Board
`
`should exclude them.
`
`C. Exhibit 2026, 2027, 2028, 2029, and 2030 are Irrelevant
`Patent Owner submitted Exhibits 2026-30 to show SEM was a standard
`
`technique in 1995. Paper 39 at 10-12. This is irrelevant because even Patent Owner
`
`does not argue the claims require or are limited to any particular visualization
`
`technique. See Paper 21 at 40-41.
`
`3
`
`
`
`
`
`IPR2016-01246, IPR2016-01247
`Patent 7,126,174 B2
`
`The possibility for confusion, though, is high, because neither Patent Owner
`
`nor its declarant identifies any portions in these references to support Patent
`
`Owner’s positions, making the Exhibits likely to waste the Board’s time and
`
`confuse the issues with hundreds of pages of ungrounded information. Further,
`
`Patent Owner never explains how Exhibit 2026, dated 2008, relates to technology
`
`in 1995. The Board should exclude Exhibits 2026-2030.
`
`III. The Board Should Exclude Exhibits 2003, 2004, and 2026 as Hearsay
`Patent Owner denies Exhibits 2003, 2004, and 2006 are hearsay, or if they
`
`are, argues its declarant can rely on them under Fed. R. Evid. 703 or the residual
`
`hearsay exception of Fed. R. Evid. 807. Paper 39, at 12-14.
`
`Patent Owner misunderstands the nature of hearsay. Exhibits 2003, 2004,
`
`and 2026 are hearsay because they contain statements by an out-of-court declarant,
`
`and because Patent Owner relies on the statements as true. Fed. R. Evid. 801(c).
`
`Plaintiff’s declarant (and not Patent Owner) cites Exhibit 2003 only once, to show
`
`a process Motorola allegedly used in 2000. EX2001 at ¶ 61 n.5. Patent Owner cites
`
`Exhibit 2004 allegedly to show “the CMP process available at the time of the
`
`invention of the ’174 patent would have planarized the Si wafer in its entirety”
`
`(although dated 2004) (Paper 14, at 102), and cites Exhibit 2026 allegedly to show
`
`“(SEM) in 1995 would show the two layers as an indistinguishable entity”
`
`(although dated 2008). Paper 14, 1003.
`
`4
`
`
`
`
`
`IPR2016-01246, IPR2016-01247
`Patent 7,126,174 B2
`
`Patent Owner also misunderstands Fed. R. Evid. 703. Patent Owner made no
`
`effort to show the evidence comprises “facts or data in the case that the expert has
`
`been made aware of or personally observed” or that “experts in the particular field
`
`would reasonably rely on” them. Fed. R. Evid. 703. Because “the facts or data
`
`would otherwise be inadmissible” and “their probative value . . . substantially
`
`outweighs their prejudicial effect,” they are inadmissible. Id.
`
`Finally, Patent Owner does not explain why admitting these irrelevant
`
`exhibits is “in the interest of justice” as required by Fed. R. Evid. 807(a)(4), nor
`
`does Patent Owner even attempt to show these exhibits satisfy the three other
`
`requirements of Fed. R. Evid. 807(a). See Paper 39, at 13-14.
`
`IV. Conclusion
`For all of the foregoing reasons, the Board should exclude Exhibits 2001-19,
`
`2026-30, and 2032-33.
`
`Dated: August 2, 2017
`
`Respectfully submitted,
`
`
`
`By: /Darren M. Jiron/
`
`
`Darren M. Jiron, Reg. No. 45,777
`
`Lead Counsel for Petitioner
`
`5
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that I served a true and
`
`correct copy of the PETITIONER’S REPLY IN SUPPORT OF ITS MOTION
`
`TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c) by electronic mail,
`
`on this 2nd day of August, 2017, on counsel of record for the Patent Owner as
`
`follows:
`
`Neil F. Greenblum
`ngreenblum@gbpatent.com
`
`Michael J. Fink
`mfink@gbpatent.com
`
`Arnold Turk
`aturk@gbpatent.com
`
`
`
`Patent Owner has agreed to electronic service.
`
`Dated: August 2, 2017
`
`
`
`By: /Lauren K. Young/
`Lauren K. Young
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
