`
`Transcript of Conference Call
`
`Date: June 20, 2017
`Case: Taiwan Semiconductor Manufacturing Co., LTD -v- Godo Kaisha IP Bridge 1
`(PTAB)
`
`Planet Depos
`Phone: 888.433.3767
`Email:: transcripts@planetdepos.com
`www.planetdepos.com
`
`WORLDWIDE COURT REPORTING | INTERPRETATION | TRIAL SERVICES
`
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`------------------------------------X
`TAIWAN SEMICONDUCTOR MANUFACTURING )
`COMPANY, LTD., )
` Petitioner, )
` V ) Case No.
`GODO KAISHA IP BRIDGE 1, ) IPR2016-01246
` Patent Owner, )
`------------------------------------X
`
` Motions Conference Call
` Tuesday, June 20, 2017
` 4:00 p.m.
`
`Job No.: 149161
`Pages 1 - 34
`Reported by: Dianna C. Kilgalen
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`2
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` Motions conference call in the above-
`captioned matter before the following:
` Judge Arbis
` Judge Fitzpatrick
` Judge Chagnon
`
` Pursuant to agreement, before Dianna C.
`Kilgalen, Notary Public for the State of Maryland.
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`3
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` A P P E A R A N C E S
`ON BEHALF OF THE PETITIONER:
` JOSHUA GOLDBERG, ESQUIRE
` J. PRESTON LONG, ESQUIRE
` FINNEGAN, HENDERSON, FARABOW, GARRETT &
` DUNNER, LLP
` 901 New York Avenue, Northwest
` Washington, DC 20001-4413
` 202.408.4000
` ON BEHALF OF THE PATENT OWNER:
` NEIL F. GREENBLUM, ESQUIRE
` MICHAEL J. FINK, ESQUIRE
` GREENBLUM & BERNSTEIN, PLC
` 1950 Roland Clarke Place
` Reston, Virginia 20191
` 703.716.1191
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` E X H I B I T S
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` JUDGE ARBIS: This is Judge Arbis, along
`with Judge Fitzpatrick and Judge Chagnon. This is
`a conference call in Case IPR2016-01246. Is
`counsel for Petitioner on line?
` MR. GOLDBERG: Yes. This is Joshua
`Goldberg for Taiwan Semiconductor Manufacturing
`Company. I also have with me my colleague J. P.
`Long.
` JUDGE ARBIS: Counsel for Patent Owner?
` MR. GREENBLUM: Good afternoon. This is
`Neil Greenblum and Mike Fink, Michael Fink, and I
`believe is also on the line if not now then shortly
`should be Arnie -- Arnold Turk.
` JUDGE ARBIS: Great. Thank you. I
`understand we have a court reporter on the line
`today.
` THE REPORTER: Yes. This is Dianna
`Kilgalen with Planet Depos.
` JUDGE ARBIS: Counsel for Patent Owner, I
`believe you were the ones that requested the court
`reporter?
` MR. GREENBLUM: We did.
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` JUDGE ARBIS: Please file a copy of the
`transcript after the call as soon as you get it. I
`believe the conference call today was requested by
`Patent Owner to discuss an issue with Petitioner's
`reply. So we can hear from Patent Owner first.
` One note for the parties before we begin.
`I just wanted to note again the proper procedure
`for e-mail to the board. I do ask that the parties
`confer with each other and make sure that the issue
`has been fully addressed by the parties and both
`sides are aware of each others' position before
`e-mailing the board to request a conference call to
`seek some sort of relief.
` So if you could do that in the future, it
`can avoid multiple e-mails to the board, we would
`appreciate it.
` Counsel for Patent Owner, would you like
`to go first and explain what you are requesting?
` MR. GREENBLUM: Thank you. Just one
`question; you said you wanted a transcript
`immediately. Do you want the rough ASCII or do you
`want to wait for the expedited transcript?
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`7
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` JUDGE ARBIS: Why don't we wait until the
`end of the call and then we can decide.
` MR. GREENBLUM: Okay. Thank you. Thank
`you very much for taking the call today. We are
`asking -- Patent Owner is asking that the reply and
`declaration be struck in large or in its entirety,
`as well as most of the 35 new exhibits, if not all
`of them.
` We are still going through them to try to
`figure out exactly which ones may have been
`mentioned earlier on.
` The reason we are asking for this, I mean,
`it's quite unusual to see 35 new exhibits show up
`in a reply in any context. But I thought that I
`would start off by first referring to a decision
`that the board directed our attention to, the
`Arioso case.
` And the Arioso case, it can be cited on, I
`guess, a number of different things. But I will
`start off by pointing on page 14 of the case, it
`refers to complexity. You look at complexity in
`deciding how much has to be in the initial
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`petition.
` And they say: Given the complexity in
`this area and how seemingly small differences might
`be significant, dot, dot, dot. And we think that
`this is a complex case, and we have said that in
`our filings and we continue to maintain that.
` Second of all, on the same page, Arioso
`says -- now this is the CAFC speaking to the board
`and instructing the board -- they are saying that
`the petition did not explain how or where the
`references differ from the challenged claims, how
`one of ordinary skill in the art would go about
`combining their disparate elements.
` Your Honor, that is the key here as far as
`we are concerned in our initial -- in our response.
`We very heavily emphasized the fact that there was
`a requirement for how to combine the elements and
`that there was none provided in the initial
`petition.
` And then finally, I will just sort of jump
`a little bit to the end but then come back just to
`say, you know, this as you of all know best that
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`9
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`the proceeding here is an accelerated proceeding.
`And reading again from Arioso: Congress assigned
`to challenger as Petitioner the burden of
`persuasion in the dispute. That burden together
`with the procedural rules impartially applied means
`that in some cases, a challenge can fail even if
`different evidence and arguments might have led to
`success.
` And I sort of sense in reading their reply
`it's like: Oh, come on. We missed it the first
`time around, but there are 35 more documents that
`show that we are right.
` The issue here, going to the crux of what
`is at stake here, is that initial rejection which
`was Lee or Lowery or Nobel or Ogawa, I will just
`shorthand it and say that was basically an A in
`view of B rejection, Lee in view of Nobel, Lee in
`view of Ogawa, A in view of B.
` And what the reply has done is to entirely
`change the argument, to shift it so that it's now
`either A in view of B as modified by C, or just
`simply A in view of C. And they provide 35
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`documents. I say 35. It's somewhere between 30
`and 35 which are totally new, and 90 pages of
`declaration testimony.
` Now, before they said take B as it is and
`all you have to do is substitute it into the device
`of A that they pointed to. Add some other device
`in some other embodiment in B, add some other
`device in some other exhibit, but not the one that
`they focused us on and directed us to.
` Now they say change B as in any one of
`these 30 or so documents or maybe all of them. I
`don't know.
` JUDGE ARBIS: Counsel, can you give us an
`example, your best example, where you said A in
`view of B as modified by C or in view of C, can you
`give us an example of what C is?
` MR. GREENBLUM: Okay. So I will
`address -- I will direct -- I will direct the board
`to page 17 of the Petitioner's reply. I'm sorry.
`Page 19. My apologies. Do you have that in front
`of you?
` JUDGE ARBIS: I do, yes.
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`11
`
` MR. GREENBLUM: On page 19, right below
`the modified Lee Figure 11, it says instead of
`Locos -- Locos would be Lee or Lowery -- instead of
`Locos raised FTI 113 is formed by any of the
`well-known processes discussed above. Those are
`the 30 or 35.
` So that goes exactly to the core of the
`argument here. They are not saying any more, just
`take in B and combine it in to A or the device of B
`into A. They are saying take the device of B or
`just -- and modify it as any one of these 35
`references would do, and then combine that modified
`version into A.
` And they did the same thing with respect
`to Lowery. Now, I -- so we find that to be, of
`course, very objectionable. The entire thrust of
`their argument has now changed in light of what
`they have put in their reply.
` I would direct the board to the NuVasive
`case in that regard. They originally said it was a
`simple substitution. Just substitute the device of
`B into A and now they changed the whole structure
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`12
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`of the argument.
` Now, what I find surprising, troubling and
`incomprehensible is that on page 17 of their reply,
`they say that these other references -- and this is
`page 17 -- it says: Although these additional
`cited references are duplicative of what's in the
`petition and not essential to any obviousness
`finding.
` So what we have here is 30 to 35 new
`exhibits that are duplicative and not essential
`that are being added into the mix, which
`constitutes an entirely new argument, and which now
`puts the burden on us to try to somehow deal with
`35 documents -- I say 35. I keep meaning 30 to
`35 -- under an accelerated proceeding and it just
`can't be done under the timelines that are involved
`here.
` A reply -- the reply that they filed
`should only respond to arguments raised in the
`Patent Owner's response. That is 37 CFR Section
`42.23 B, which I'm sure the board is well aware of.
` Now, I get the idea that they want to
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`respond. But -- and when they respond, they cannot
`shift to an entirely different argument. When
`there are new and impermissible issues, the CAFC --
`this is in the Intelligent Bio-Systems case -- says
`neither we nor the board should have to sort them
`out.
` I mean, we have been trying to sort them
`out, but it's virtually impossible. I will add
`that the declaration that has been added in
`connection with these 35 documents is 90 pages long
`on the reply.
` I mean, that almost -- what do they say --
`ipso facto says that it can't possibly just be a
`response to argument. These new teachings go to
`how the devices are to be combined. That's what
`this whole briefing is now about.
` Now, both the Petitioner and, with all due
`respect, the board -- I will speak for the
`Petitioner first -- the Petitioner was very, very
`definite. They don't have to say how. And that
`was the role they took in their first petition --
`in their petition.
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`14
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` We objected to that. They never moved to
`add evidence, to substitute evidence, or to
`supplement in any way. And here we are. The board
`seems to feel as well that the requirement to say
`how the devices are to be combined was not
`necessary.
` So then if that's the case and what they
`are adding in is duplicative of what was there
`before and not necessary, not essential to the
`argument, there should be absolutely no reason at
`all that this reply should not be stricken.
` We ask that we be permitted to file a
`motion to strike.
` JUDGE ARBIS: Okay. Why don't we hear
`from the Petitioner. Before we do, just to make
`sure I understand the request, this is a request
`for authorization to file a motion to strike both
`the reply brief, the expert declaration and the
`exhibits all in their entirety?
` MR. GREENBLUM: Well, you know, we are
`trying to parse it as best as possible. It is
`possible that the last ten pages of the reply may
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`15
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`go just to rebutting our argument, and -- but what
`concerns me greatly is all it takes is one sentence
`in there that says and based upon the other
`documents we have cited herein, and suddenly they
`all come into the case.
` That is the only reason why I'm being a
`little hesitant. I hope you understand.
` JUDGE ARBIS: Okay. I want to hear from
`Petitioner now. And then we will give the Patent
`Owner the last word. Counsel for Petitioner, would
`you like to respond?
` MR. GOLDBERG: Thank you, your Honor.
`This is Joshua Goldberg for Petitioner again. I
`want to start by just letting your Honors know that
`we appreciate the point that you made at the
`beginning about making sure that issues were fully
`vetted before they came to the board.
` And we would submit that this issue has
`not been fully vetted. This is the first we have
`heard of any of these cases, of any of these
`specifics, of any of these discussions.
` The entirety of the information that was
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`16
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`sent to us about this last night that counsel for
`Patent Owner forwarded to the board and said we
`told them about it, I quote: It will be asserted
`in our request for authorization to file a motion
`to strike the reply, that the entirety of the reply
`and evidence except for the end of the reply, the
`part beginning at page 42, raises new grounds of
`rejection. That argument is not in the scope of
`the original petition and is an improper reply.
` So this is the first that we are hearing
`of any of these details today. I will try the best
`I can just based on my memory of some of the cases
`that he was referring to, try to address them.
` And then I have also got my co-counsel
`here who can get into the details of some of the
`substantive points that counsel for Patent Owner
`was trying to make.
` JUDGE ARBIS: Counsel, I understand the
`point about the procedural posture of this. What I
`would be curious to hear is why is the substance of
`what you argue in the reply, why is that proper
`under 42.23?
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`17
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` Counsel has requested authorization to
`file a motion to strike. Why do you oppose that?
` MR. GOLDBERG: So we oppose that
`because -- the simple reason is what we said,
`everything is responsive to what was in our Patent
`Owner response. You know, he, at the very end of
`Patent Owner's discussions, this is the very first
`time he brought up 42.23 and started talking about
`how it wasn't responsive. But at the same time, he
`spent a little time -- or a large portion of the
`time talking about how there has been this back-
`and-forth issue between the parties about whether
`the process matters or not for the claim, and
`that's something that has been on the table for a
`while.
` And under the case which we actually cited
`in our reply, one of the things that is important
`under the APA is that the issues be fully vetted.
`And our understanding is that the point of a reply
`is so that a petitioner has an opportunity to
`respond to what the Patent Owner said in their
`Patent Owner response.
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`18
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` In fact, the rules actually provide for
`the fact that evidence can be filed with replies.
`That is why there can be depositions after replies.
`And that is why there can be observations after
`those depositions.
` At its core, the big issue that has been
`in play here is whether or not these processes
`matter. The Patent Owner made that an issue in the
`Patent Owner response. Our reply is simply
`responding to that.
` Now, I will let my co-counsel, J. P. Long,
`go through some of the specifics and we can talk
`about the individual pages and whatnot that Patent
`Owner's counsel is pointing to, why each of our
`arguments are directly responsive to what Patent
`Owner was stating in the Patent Owner response
`based on what is appropriate here.
` And if your Honors are interested, we can
`talk a little bit about the Arioso and NuVasive
`cases, too.
` JUDGE ARBIS: Let's go over maybe one
`example, if you could respond to one of the
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`19
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`examples that Patent Owner has pointed to. Then I
`may ask a couple other questions.
` MR. LONG: Sure this is J. P. Long for the
`Petitioner. Two of the arguments that the Patent
`Owner makes in its response is that, quote: It is
`not simply possible to start with Nobel's or
`Ogawa's trench isolation without first forming the
`gate dielectric and gate conductor because
`Nobel/Ogawa's trench isolation formation depends on
`in the availability of the gate dielectric and the
`conductor.
` As Josh mentioned, you know, one of the
`issues that Patent Owner has put into place in
`these proceedings is whether a process is needed to
`show the obviousness of a structure. Our position
`has not changed. It is that the structure, the FTI
`structure shown in Nobel and Ogawa, is
`substitutable, is a functionally equivalent item
`that can be replaced, and to the Lee and Lowery
`devices. That has not changed what we are arguing.
` In fact, all we are doing is responding to
`the argument that that would have been impossible,
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`20
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`which was an argument that Patent Owner raised in
`its response. It's simply not accurate unless you
`are attempting to make a literal physical
`combination of particular embodiments, the
`references.
` All we are doing is showing what was well
`known about how one makes the structures shown in
`Nobel and Ogawa, including, for example, references
`that are specifically incorporated by reference for
`that teaching that show it is entirely consistent
`with what we are showing.
` If you will note the example shown on page
`19, all we are doing is illustrating what we said
`in the petition, which is a substitution for FTI,
`which is the block shaped isolation modified in
`figure 191 or the more Nobel shape print isolation
`in Figure 11.
` Why Patent Owner believes that we have
`changed our position and are somehow making widely
`different accusations here with this is beyond me,
`because this is pretty much as straightforward as
`it gets.
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`21
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` If you notice, we cite the petition
`specifically where we explain very clearly in no
`uncertain terms the substitution we are making. In
`other words, how the references would be modified
`and also why they would be modified. I think we
`have applied pages and pages.
` JUDGE ARBIS: Would you respond to the
`Patent Owner's argument about the explanation of
`how you would combine two references? If Patent
`Owner is correct that that was not in the
`petitions, why is that appropriate to come in on
`reply?
` MR. LONG: Why specifically -- I'm sorry.
`Could you repeat the question?
` JUDGE ARBIS: Sure. If the Patent Owner
`has said that the petition did not explain in
`detail how you would combine the references, how
`you would combine A and B, and that that
`explanation has come in for the first time with the
`reply and that that is improper, why do you believe
`that that is proper to do that?
` MR. LONG: Well, we briefed this. In
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`fact, the entire Section 2B of our reply addresses
`that precise argument. I would like to point out
`that although there is no new evidence cited there,
`we are particularly just responding to legal
`arguments. That is also part of what Patent Owner
`is trying to strike in our reply.
` But there is no requirement that how it is
`specifically a process performing a structure. The
`question is simply whether a person of ordinary
`skill in the art would reasonably expect to succeed
`in making the alleged substitution.
` And we provided ample evidence in the
`petition explaining that these were substitutes.
`They were well-known substitutes. Various examples
`explained that you could use one rather than the
`other.
` The process isn't particularly at issue,
`because a person of ordinary skill would know how
`to do that. And we also identified examples, for
`example, the admitted prior art. And this was all
`discussed.
` Actually, on page 16, we show a summary of
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`evidence of record that actually shows how these
`things specifically were made. But the particular
`processes for showing the substitutability of a
`device claim has never been a requirement, only
`reasonable likelihood of success.
` For something like this where it is so
`trivial that there is ample evidence suggesting
`they were functionally equivalent substitutes and
`that everyone knew that, and numerous references
`are explaining that they are interchangeable, why
`we would need to fill out a particular way --
`process for doing that is not the legal
`requirement.
` It's like saying, you know, someone knows
`how to make a chair because one references making
`the legs before the back, one references just
`making the back before the legs. Therefore,
`someone would know to substitute the back of one
`chair for the back of another chair simply
`because -- you know, it's just not something that a
`particular process is needed to explain, because it
`was known that these were substitutable.
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` It's only because the Patent Owner has
`chosen to try to make this an issue by taking a
`very, very narrow reading of the prior art and
`ignoring, in fact, evidence from -- evidence we
`cited of what a person of ordinary skill in the art
`would know, including the prior art in the patent.
` Only by ignoring all of that evidence and
`the processes for making the FTI, and focusing
`particularly on specific embodiments, only by doing
`that does Patent Owner even have any argument to
`make.
` I will just point out the processes that
`Nobel and Ogawa specifically use are exactly like
`the other processes. They just skip a step at the
`very end of the normal FTI fabrication process.
`That is part of the admission.
` JUDGE ARBIS: Okay. Counsel, I think we
`understand your position. Again, the call today is
`to discuss the request for authorization for motion
`to strike.
` So what I would like to do now is we will
`give Patent Owner the last word if you would like
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`to respond to Petitioner. Then the panel will
`confer. Counsel for Patent Owner?
` MR. GREENBLUM: I will make it brief. The
`reason that the briefing focused in on Ogawa and
`Nobel is because that is what the Petitioner
`asserted. And they asserted the ones that were
`different than all the others. You just heard it.
` They are the ones where the order is
`different than the others. And that's what we
`responded to. And now we are being told: Well,
`there's 35 others that do it a different way and we
`should know about -- and you should take that into
`account.
` What I also heard now in the argument is
`the petition itself has ample evidence therein.
`The evidence of record is sufficient. Now -- we
`are told in the briefing that this new material is
`duplicative and nonessential.
` It seems to me the decision is very easy
`to strike the reply today. Somebody who says it's
`nonessential, it doesn't make a difference, but I'm
`going to submit 90 pages that the Patent Owner is
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`going to now have to work through and it's going to
`take a lot of time, I think the answer is very
`simple: Strike it.
` I think -- I will stop there. I don't
`want to get worked up here.
` JUDGE ARBIS: Okay. We would like -- the
`panel would like to confer briefly. So we will go
`on mute. All parties can stay on the line. We
`will be back shortly.
` (Thereupon, there was a recess taken at
`4:27 p.m.)
` (Thereupon, the proceedings were resumed
`at 4:30 p.m.)
` JUDGE ARBIS: This is Judge Arbis. Is
`everyone on the line?
` MR. GREENBLUM: Yes.
` MR. GOLDBERG: Yes, your Honor.
` JUDGE ARBIS: The panel will take this
`matter under advisement. We would like to confer
`further before making a decision. We will issue an
`order with a decision on Patent Owner's request for
`authorization to file a motion to strike.
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` Patent Owner, if you can file a transcript
`of today's call as soon as possible, we would
`appreciate it. Please wait until the complete
`transcript is available, not the rough copy. But
`again, if you could file that as soon as possible,
`that would be great.
` We will issue an order as soon as possible
`after that. Any questions or other issues from the
`parties today?
` MR. GREENBLUM: Your Honor, this is Neil
`Greenblum for Patent Owner. There is a whole -- we
`have a schedule that the board has set out and this
`reply has thrown a monkey wrench into our
`scheduling and the way we would do things.
` There is -- you know, the question of
`surreply comes up, the question of the length of
`any motion, but certainly surreply. We have got a
`motion -- we have got a reply here with 90 pages of
`declaration.
` Do we get a surreply? How long may it be?
`Is this premature to discuss at this point?
` JUDGE ARBIS: Well, it was my
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`understanding that Patent Owner was just requesting
`authorization today for a motion to strike. Are
`you also requesting authorization for a surreply?
` MR. GREENBLUM: If your Honors would
`prefer, I could make a separate request so that
`Petitioner has an opportunity to object to that. I
`don't want to surprise them on this in any way.
` MR. GOLDBERG: This is Petitioner. We
`kind --
` JUDGE FITZPATRICK: Let me just go back to
`the panel real quick. What would be the point of a
`surreply if the whole point of what I'm
`understanding your argument to be is that part or
`all of Petitioner's reply is improper? Why would
`more argument alleviate that situation?
` MR. GREENBLUM: That's exactly right. I
`have been asking this question for the last two
`days. But it's my understanding that we won't get
`a decision on the motion to strike until the final
`decision.
` So if there -- so I have to protect
`myself. Did I answer the question?
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` JUDGE FITZPATRICK: It sounds like you
`have a procedure -- a tactical reason for wanting
`it, but not -- I don't understand the legal
`justification for it.
` MR. GREENBLUM: Well, if my motion gets
`denied, I guess I have to somehow respond to the
`reply. I have to -- there were 35 new documents in
`there. Now, maybe I'm mis --
` JUDGE FITZPATRICK: This is the way I have
`dealt with this in the past. This issue has come
`up in other cases. Maybe this will be the way we
`end up -- this panel decides, is that we are not
`going to have any more briefing of any kind.
` And you are free to -- at oral hearing,
`assuming you request one, you are free to point
`this out. We know when we are reading the
`petition. We know what the petition will read and
`the reply.
` You know, we are conscious of what's in
`what papers when we go to rule, when we decide
`issues.
` So adding more papers just so that you can
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`respond to something that you think that they
`shouldn't -- something that they shouldn't have
`said in the first place because it was too late
`doesn't seem to me to fix the situation. It seems
`it would make the situation worse.
` MR. GREENBLUM: Your Honor, you are the
`judge. It seems that that is the way I might have
`done it in another instance. But if that's what
`you would prefer, then I can only say that I would
`hate to come in to the trial and have to talk about
`34 documents or something and not know where I
`stand.
` JUDGE FITZPATRICK: Right. Well, here's
`where I would say you would stand, is if this is
`improper argument and improper, you know, late --
`too-late evidence -- basically, I think in a
`nutshell, you are saying they are trying to make a
`prima facie case in their reply brief.
` MR. GREENBLUM: That is correct.
` JUDGE FITZPATRICK: If that is, in fact,
`the case, and you point that out to us and you are
`correct, we are going to agree with you, and you
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`are going to see a decision that accords with that
`if that's truly what's going on here.
` And it's possible we make the mistake and
`perhaps we don't. And then you are going to have
`that argument in the federal circuit to say that we
`screwed up.
` But that's how I have dealt with it in the
`past. I don't think you need to -- if those 30 or
`those 3