`
`
`
`
`
`
`
`
`
`
`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
`
`——————————
`
`PETITIONER’S OBJECTIONS TO
`PATENT OWNER’S EXHIBITS 2045 AND 2046
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner objects to the following
`
`IPR2016-01249
`U.S. Patent No. 6,538,324
`
`
`Patent Owner exhibits filed on June 21, 2017:
`
`2045
`
`2046
`
`Redacted version of Invalidity Expert Report of Chris
`Mack without attachments
`Declaration of Rumiko Whitehead
`
`
`Petitioner objects to Exhibit 2045 for lack of authentication under FRE 901,
`
`for being irrelevant under FRE 401-403, for failing to provide a complete copy
`
`under FRE 106, and as inadmissible hearsay under FRE 802 to the extent Patent
`
`Owner relies on this exhibit for the truth of the statements set forth therein.
`
`In Exhibit 2046, a paralegal of Patent Owner’s counsel stated “Exhibit 2045
`
`is a redacted copy of the Invalidity Expert Report of Chris Mack (without
`
`attachments), dated January 30, 2017, obtained from litigation counsel in Godo
`
`Kaisha IP Bridge 1 v. Broadcom Limited et al., USDC EDTEX 2:16-cv-00134-
`
`JRG-RSP. Litigation counsel specifically confirmed that this copy of the
`
`Invalidity Expert Report of Chris Mack was correct.” Ex. 2046 at ¶ 4. The
`
`paralegal did not further identify any particular “litigation counsel,” nor did she
`
`explain how or why the heavily-redacted Exhibit 2045 was confirmed to be
`
`“correct.” Petitioner objects to Paragraph 4 in the paralegal’s declaration
`
`(Ex. 2046) as inadmissible hearsay under FRE 802. Patent Owner has provided
`
`no other evidence to support whether Ex. 2045 is an authentic copy. FRE 901.
`
`
`
`1
`
`
`
`Exhibit 2045 is also irrelevant because whether an expert in the related
`
`IPR2016-01249
`U.S. Patent No. 6,538,324
`
`
`litigation provided an invalidity opinion does not alter Patent Owner’s duty of
`
`candor to disclose the known, material prior-art references that it omitted from its
`
`Motion to Amend. Patent Owner offers Exhibit 2045 to prove the “immateriality of
`
`Exhibits 1025-1031,” but without access to the redacted portions of this exhibit, it
`
`is impossible to ascertain whether the redacted information addressed, referred, or
`
`otherwise related to any of Exhibits 1025-1031. Because redacted Exhibit 2045
`
`fails to provide sufficient information to support whether the expert in the district
`
`court considered any of Exhibits 1025-1031 in his invalidity opinions, Petitioner
`
`objects to this exhibit as irrelevant and incomplete. FRE 401-403, 106.
`
`Petitioner further objects to this exhibit as irrelevant because the redacted
`
`expert report was prepared in a district court litigation that applied a different claim
`
`construction standard than the current proceeding. FRE 401-403. Petitioner also
`
`objects to this exhibit as unfairly prejudicial because Patent Owner relies on expert
`
`testimony that has been redacted from the exhibit. FRE 403.
`
`
`
`
`
`Dated: June 28, 2017
`
`Respectfully submitted,
`
`By: /Stephen E. Kabakoff/
`Stephen E. Kabakoff
`Reg. No. 51,276
`
`
`
`
`
`
`
`2
`
`
`
`IPR2016-01249
`U.S. Patent No. 6,538,324
`
`
`CERTIFICATE OF SERVICE
`
`This is to certify under 37 C.F.R. § 42.6(e) that, on this 28 day of June 2017,
`
`
`
`I caused counsel of record for the Patent Owner (as listed below) to be
`
`electronically served a true and correct copy of the foregoing PETITIONER’S
`
`OBJECTIONS TO PATENT OWNER’S EXHIBITS 2045 AND 2046:
`
`Michael J. Fink (Reg. No. 31,827)
`mfink@gbpatent.com
`
`Neil F. Greenblum (Reg. No. 28,394)
`ngreenblum@gbpatent.com
`
`Arnold Turk (Reg. No. 33,094)
`aturk@gbpatent.com
`
`
`
`
`By: /Lauren K. Young/
`Lauren K. Young
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`
`
`
`
`Dated: June 28, 2017
`
`
`
`
`
`