Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
`
`
`Filed on behalf of Godo Kaisha IP Bridge 1
`
`By: Michael J. Fink (mfink@gbpatent.com)
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 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,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2016-01249
`U.S. Patent No. 6,538,324
`____________
`
`PATENT OWNER’S OBJECTIONS TO PETITIONER’S
`EXHIBITS PURSUANT TO 37 C.F.R. § 42.64(b)(1)
`
`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`U.S. Patent No. 6,538,324
`
`
`Filed on behalf of Godo Kaisha IP Bridge 1
`
`By: Michael J. Fink (mfink@gbpatent.com)
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 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,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2016-01249
`U.S. Patent No. 6,538,324
`____________
`
`PATENT OWNER’S OBJECTIONS TO PETITIONER’S
`EXHIBITS PURSUANT TO 37 C.F.R. § 42.64(b)(1)
`
`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner objects to the following
`
`Petitioner exhibits:
`
`Exhibit No.
`
`Description
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1035
`
`1037
`
`U.K. Patent No. 2,298,657 to Cho.
`
`U.S. Patent No. 5,780,908 to Sekiguchi et al.
`
`U.S. Patent No. 5,869,902 to Lee et al.
`
`U.S. Patent No. 5,882,399 to Ngan et al.
`
`U.S. Patent No. 6,057,237 to Ding et al.
`
`U.S. Patent No. 6,136,682 to Hegde et al.
`
`U.S. Patent No. 6,242,804 to Inoue et al.
`
`Annotated FIG. 4 of U.S. Patent No. 5,893,752 to Zhang et al.
`
`U.S. Patent No. 6,458,255 to Chiang et al.
`
`U.S. Patent No. 5,281,485 to Colgan et al.
`
`Invalidity Contentions, Godo Kaisha IP Bridge 1 v. Broadcom
`Limited, et al., Case No. 2:16-cv-134
`
`1038
`
`Declaration of Dr. Sanjay K. Banerjee.
`
`
`
`I.
`
`Exhibits 1025-1031
`
`Patent Owner objects to Exhibits 1025-1031 as irrelevant. FRE 401-403.
`
`None of these Exhibits were identified alone, or in combination to modify another
`
`reference, as a ground of invalidity in the expert reports filed in Godo Kaisha IP
`
`Bridge 1 v. Broadcom Limited, et al., Case No. 2:16-cv-134. Moreover, neither
`
`declaration of Petitioner’s expert, Dr. Sanjay K. Banerjee (Exhibits 1003 & 1038),
`
`discuss these Exhibits (other than to mention that they were reviewed (Exhibit
`
`
`
`1
`
`
`
`
`
`1038, pp. 3-4)), or how any of these Exhibits, alone or in combination, would
`
`render any of the proposed Substitute Claims 11-13 unpatentable. Thus, Exhibits
`
`1025-1031 are irrelevant under FRE 401-403.
`
`Furthermore, Exhibits 1025-1031 are irrelevant because they needlessly
`
`present cumulative information. FRE 401-403.
`
`Additionally, Exhibits 1025-1031 are objected to as new evidence
`
`attempting to support a prima facie case for the unpatentability of an original
`
`claim, or that could have been presented in a prior filing. Such new evidence is
`
`improperly raised in a reply.
`
`II. Exhibit 1033
`
`Exhibit 1033 is objected to as new evidence attempting to support a prima
`
`facie case for the unpatentability of an original claim, or that could have been
`
`presented in a prior filing. Such new evidence is improperly raised in a reply.
`
`III. Exhibit 1035
`
`Exhibit 1035 is objected to as new evidence attempting to support a prima
`
`facie case for the unpatentability of an original claim, or that could have been
`
`presented in a prior filing. Such new evidence is improperly raised in a reply.
`
`IV. Exhibit 1037
`
`Patent Owner objects to this exhibit for lack of authentication under FRE
`
`901, as irrelevant under FRE 401-403, and to the extent Petitioner relies on this
`
`
`
`2
`
`
`
`
`
`Exhibit for the truth of the statements set forth therein, Patent Owner objects to it
`
`as inadmissible hearsay under FRE 802. Moreover, all of the prior art cited in
`
`Exhibit 1037 was available to Petitioner prior to the filing date of the Petition.
`
`Exhibit 1037 is further objected to as new evidence attempting to support a
`
`prima facie case for the unpatentability of an original claim, or that could have
`
`been presented in a prior filing. Such new evidence is improperly raised in a reply.
`
`V. Exhibit 1038
`
`Patent Owner objects to Exhibit 1038 to the extent relied upon to support
`
`Petitioner’s Reply To Patent Owner’s Response. All of the “Opinions” set forth in
`
`Exhibit 1038 are directed to the Substitute Claims proposed in Patent Owner’s
`
`Contingent Motion To Amend Pursuant To 37 C.F.R. § 42.121. As such, the
`
`statements set forth Exhibit 1038 must be limited to Petitioner’s Opposition To
`
`Patent Owner’s Contingent Motion To Amend, and are not relevant to Petitioner’s
`
`Reply. FRE 401-403. For example, paragraphs 17-20 of Exhibit 1038 which
`
`discuss Nogami (Exhibit 2039, raised by Patent Owner only with respect to the
`
`Substitute Claims) do not appear to address only the Substitute Claims.
`
`Patent Owner additionally objects to Exhibit 1038, paragraphs15 and 16, as
`
`not related to a challenged ground, and therefore irrelevant. The Board previously
`
`rejected Petitioner’s argument that Ding discloses a top barrier layer containing
`
`nitrogen.
`
`
`
`3
`
`
`
`
`
`Additionally, to the extent that Exhibit 1038 refers to Exhibits 1025-1031,
`
`1033, 1035, and/or 2039, such references cannot support Petitioner’s Reply To
`
`Patent Owner’s Response because they would be new evidence attempting to
`
`support a prima facie case for the unpatentability of an original claim, or that could
`
`have been presented in a prior filing. Such new evidence is improperly raised in a
`
`reply.
`
`
`
`Dated: May 26, 2017
`
`Respectfully Submitted by:
`
`
`
`
`/Michael J. Fink/
`Michael J. Fink
`Registration No. 31,827
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`Tel: 703-716-1191
`Fax: 703-716-1180
`Email: mfink@gbpatent.com
`
`Attorney for Patent Owner,
`IP Bridge
`
`
`
`4
`
`
`
`{R50501 03122803.DOCX}
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true copy of the foregoing:
`
`PATENT OWNER’S OBJECTIONS TO PETITIONER’S
`EXHIBITS PURSUANT TO 37 C.F.R. § 42.64(b)(1)
`
`was served by electronic mail on this 26th day of May, 2017, upon Counsel for
`
`Petitioner, as follows:
`
`E. Robert Yoches (bob.yoches@finnegan.com);
`Stephen E. Kabakoff (stephen.kabakoff@finnegan.com);
`Joshua L. Goldberg (joshua.goldberg@finnegan.com); and
`TSMC-IPB-PTAB@finnegan.com.
`
`
`
`/Michael J. Fink/
`Michael J. Fink
`Registration No. 31,827
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`Tel: 703-716-1191
`Fax: 703-716-1180
`Email: mfink@gbpatent.com
`
`
`
`
`
`
`
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