Trials@uspto.gov
`571-272-7822
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`Paper 12
`Date: January 20, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACURING COMPANY
`LIMITED,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`
`
`
`Case IPR2016-01249
`Case IPR2016-01264
`Patent 6,538,324 B11
`
`
`
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`ORDER
`Management of the Record
`37 C.F.R. § 42.7
`
`
`
`
`
`1 This Order employs a joint caption, as it governs both of the identified
`inter partes reviews. The parties may not use a joint caption unless
`authorized.
`
`
`571-272-7822
`
`
`
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`
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`
`
`Paper 12
`Date: January 20, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACURING COMPANY
`LIMITED,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`
`
`
`Case IPR2016-01249
`Case IPR2016-01264
`Patent 6,538,324 B11
`
`
`
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`ORDER
`Management of the Record
`37 C.F.R. § 42.7
`
`
`
`
`
`1 This Order employs a joint caption, as it governs both of the identified
`inter partes reviews. The parties may not use a joint caption unless
`authorized.
`
`
`
`IPR2016-01249
`IPR2016-01264
`Patent 6,538,324 B1
`
`After each of these inter partes reviews was instituted, Petitioner,
`Taiwan Semiconductor Manufacturing Company Limited, filed objections to
`evidence filed by Patent Owner, Godo Kaisha IP Bridge 1. See Paper 9
`(objecting to the admissibility of Exhibits 2001–2004).2 In response to those
`objections, Patent Owner filed supplemental evidence (namely, Exhibits
`2005–2007), a Notice of Supplemental Evidence (Paper 10), and an updated
`list of Patent Owner’s exhibits (Paper 11). Petitioner conferred with Patent
`Owner regarding the propriety of Patent Owner’s filing of Exhibits 2005–
`2007 and Papers 10 and 11, and the parties remained in disagreement. A
`Petitioner-requested conference call was held January 19, 2017, among
`counsel for both sides and the panel.
`During the call, Petitioner argued that Exhibits 2005–2007 and Papers
`10 and 11 should be expunged, contrasting the express language of
`37 C.F.R. § 42.64(b)(1) and (2). See id. at (b)(1) (“Any objection to
`evidence submitted during a preliminary proceeding must be filed within ten
`business days of the institution of the trial.”), (b)(2) (“The party relying on
`evidence to which an objection is timely served may respond to the
`objection by serving supplemental evidence within ten business days of
`service of the objection.”) (emphasis added).
`Patent Owner argued that, although 37 C.F.R. § 42.64(b)(2) expressly
`refers only to serving supplemental evidence, the rule does not prohibit
`filing supplement evidence.
`
`
`2 All citations in this Order apply with respect to both inter partes reviews.
`2
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`
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`IPR2016-01249
`IPR2016-01264
`Patent 6,538,324 B1
`
`As explained during the call, we view 37 C.F.R. § 42.64(b)(2) as
`authorizing the service, but not filing, of supplemental evidence in response
`to objections. The rule does not require (or authorize) the filing of
`supplemental evidence at the time it must be served. This is so because it is
`contemplated that, in some instances, supplemental evidence will cure
`objections to the satisfaction of the objecting party. In those instances, the
`supplemental evidence never becomes relevant to any issue that must be
`decided by the panel. In other instances, supplemental evidence served on
`an objecting party may not cure the objections to the satisfaction of the
`objecting party, and the objecting party may thereafter file a motion to
`exclude. If the evidence-proffering party opposes the motion to exclude, it
`may file supplemental evidence (assuming it had been previously timely
`served) to support the arguments for admissibility it makes in its opposition
`brief. See 37 C.F.R. § 42.6(c) (“Each exhibit must be filed with the first
`document in which it is cited except as the Board may otherwise order.”). In
`sum, we agree with Petitioner’s view that 37 C.F.R. § 42.64(b)(2) does not
`authorize filing of supplemental evidence in response to objections.
`Patent Owner also argued that other panels, in non-precedential
`decisions, have allowed the filing of supplemental evidence in response to
`objections, and that no prejudice would result from leaving Exhibits 2005–
`2007 and Papers 10 and 11 in the record. We did not ask Patent Owner to
`identify any such non-precedential decisions, as they would not be binding
`on us. Indeed, Patent Owner acknowledged that any such decisions would
`not bind us and conceded that other panels have interpreted 37 C.F.R.
`§ 42.64(b)(2) as we are interpreting it. Also, the existence (or not) of
`3
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`
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`IPR2016-01249
`IPR2016-01264
`Patent 6,538,324 B1
`
`prejudice to the objecting party does not control whether a party is
`authorized to file a paper or exhibit.
`Patent Owner was not authorized to file Exhibits 2005–2007 and
`Papers 10 and 11. We have the authority to expunge them. 37 C.F.R.
`§ 42.7(a).
`Accordingly, it is ORDERED that Exhibits 2005–2007 and Papers 10
`and 11 be expunged from each of the inter partes reviews.
`
`
`
`
`
`
`
`4
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`IPR2016-01249
`IPR2016-01264
`Patent 6,538,324 B1
`
`PETITIONER
`
`E. Robert Yoches
`Stephen Kabakoff
`Joshua Goldberg
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`bob.yoches@finnegan.com
`Stephen.kabakoff@finnegan.com
`joshua.goldberg@finnegan.com
`
`PATENT OWNER
`
`Michael Fink
`Neil Greenblum
`Arnold Turk
`GREENBLUM & BERNSTEIN, P.L.C.
`mfink@gbpatent.com
`ngreenblum@gbpatent.com
`aturk@gbpatent.com
`
`
`5
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