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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,
`and GLOBALFOUNDRIES U.S. INC.,
`Petitioners,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case No. IPR2016-012491
`U.S. Patent No. 6,538,324
`____________
`
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`1 GlobalFoundries U.S. Inc.’s motion for joinder in Case IPR2017-00919 was
`
`granted.
`
`
`
`
`
`

`

`Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
`
`I.
`
`EXHIBIT 1037 SHOULD BE EXCLUDED
`
`A. Petitioner Has Not Properly Authenticated Exhibit 1037
`
`Fed. R. Evid. 901 requires that the proponent produce sufficient evidence to
`
`support a finding that an item is what the proponent claims it is. Petitioner has not
`
`produced sufficient evidence to authenticate Exhibit 1037. Accordingly, for the
`
`reasons set forth in Patent Owner’s Motion To Exclude Evidence (Paper 29),
`
`Exhibit 1037 should be excluded for lack of authentication under FRE 901.
`
`B. Exhibit 1037 Contains Inadmissible Hearsay
`
`Petitioner asserts that statements offered to show knowledge are not hearsay,
`
`citing United States v. Figueroa, 818 F.2d 1020, 1026-1027 (1st Cir. 1987). In
`
`United States v. Figueroa, the court stated:
`
`In the case at bar, the record adequately evinces that Malfi’s
`
`testimony concerning Venuti’s statements was not aimed at
`
`establishing the veracity of those remarks. Indeed, the truth or
`
`falsity of what Venuti is alleged to have said--e.g., that his
`
`counterfeit was of better quality than Figueroa's, that it would
`
`be easier to pass, etc.--was altogether immaterial to the case and
`
`to the purpose for which the evidence was introduced. Rather,
`
`Malfi’s testimony was offered as evidence of the defendant’s
`
`knowledge of, and sophistication in, the counterfeiting industry.
`
`
`
`1
`
`

`

`Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
`
`Id. at 1026-27.
`
`
`
`The facts in United States v. Figueroa are completely different from
`
`the present case. In United States v. Figueroa, the testimony was “offered as
`
`evidence of the defendant's knowledge of, and sophistication in, the
`
`counterfeiting industry.” Id.
`
`In the present case, Petitioner is not merely relying on Patent Owner’s
`
`alleged knowledge of the existence of Exhibit 1037. Rather, Petitioner’s
`
`entire argument is based on the alleged truth of the matters asserted in
`
`Exhibit 1037. For example, Petitioner asserts: “The fact that the invalidity
`
`claim charts mapped each of these prior-art references to the ‘324 patent
`
`claims on an element-by-element basis establishes their materiality.”
`
`Petitioner’s Opposition To Patent Owner’s Contingent Motion To Amend
`
`(Paper 20), p. 3.
`
`No evidence or testimony has been provided establishing the
`
`materiality of any of the prior art references cited in Exhibit 1037, or the
`
`truth of any of the statements or assertions contained in Exhibit 1037.
`
`Indeed, Petitioner’s expert did not even discuss Exhibit 1037 or the
`
`documents Petitioner asserts are of interest (other than to mention that they
`
`were reviewed). Patent Owner’s Reply To Petitioner’s Opposition To Patent
`
`Owner’s Contingent Motion To Amend (Paper 25), pp.6-7. Petitioner’s
`
`
`
`2
`
`

`

`Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
`
`argument therefore depends on the truth of the matters asserted in Exhibit
`
`1037.
`
`Exhibit 1037 is hearsay under FRE 802 and not subject to any of the FRE
`
`803 hearsay exceptions. Petitioner’s reliance on the contentions for the truth of
`
`any of the matters presented therein constitutes impermissible hearsay. Shimano,
`
`Inc. v. Globeride, Inc., IPR2015-00273, Paper 40, at 27 (PTAB 2016).
`
`Accordingly, Exhibit 1037 should be excluded as inadmissible hearsay
`
`under FRE 802.
`
`II. CONCLUSION
`
`
`
`For the reasons discussed herein and in Patent Owner’s Motion To Exclude
`
`Evidence (Paper 29), the Board should exclude Exhibit 1037.
`
`
`
`Dated: August 2, 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
`
`
`
`
`
`3
`
`
`
`
`
`{R50501 03189714.DOC 2}
`
`

`

`Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true copy of the foregoing:
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`was served by electronic mail on this 2nd day of August, 2017, upon Counsel for
`
`Petitioners, as follows:
`
`E. Robert Yoches (bob.yoches@finnegan.com);
`Stephen E. Kabakoff (stephen.kabakoff@finnegan.com);
`Joshua L. Goldberg (joshua.goldberg@finnegan.com);
`TSMC-IPB-PTAB@finnegan.com;
`David Tennant (dtennant@whitecase.com);
`Shamita Etienne-Cummings (setienne@whitecase.com);
`Allen Wang (allen.wang@whitecase.com);
`wcptab@whitecase.com;
`WCGlobalFoundriesIPR1Team@whitecase.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
`
`Attorney for Patent Owner,
`IP Bridge
`
`
`
`
`
`
`
`

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