UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Taiwan Semiconductor Manufacturing Company, Limited
`Petitioner
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`v.
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`Godo Kaisha IP Bridge 1
`Patent Owner
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`Case IPR2016-01264
`Patent No. 6,538,324
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`PETITIONER’S OBJECTIONS TO PATENT OWNER’S EXHIBITS 2001-2004
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Taiwan Semiconductor Manufacturing Company, Limited
`Petitioner
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`v.
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`Godo Kaisha IP Bridge 1
`Patent Owner
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`
`
`
`Case IPR2016-01264
`Patent No. 6,538,324
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`PETITIONER’S OBJECTIONS TO PATENT OWNER’S EXHIBITS 2001-2004
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner objects to the following
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`Case IPR2016-01264
`Patent 6,538,324
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`Patent Owner exhibits:
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`2001
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`2002
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`2003
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`2004
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`I.
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`Chang, C.C., Chen, J.S. and Hsu, W.S., “Failure Mechanism of
`Amorphous and Crystalline Ta-N Films in the Cu/Ta-N/Ta/SiO2
`Structure.” Journal of The Electrochemical Society, 151(11), pp.
`G746-G750 (2004).
`Excerpt from Prosecution History of U.S. Patent Application No.
`08/995,108, “Amendment A” Dated February 1, 2000.
`“Amorphous.” Merriam-Webster.com. http://www.merriam-
`webster.com/dictionary/amorphous. (Accessed September 30,
`2016)
`“Nitride.” Merriam-Webster.com. http://www.merriam-
`webster.com/dictionary/nitride. (Accessed September 30,
`2016)
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`Exhibit 2001
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`Petitioner objects to Exhibit 2001 under Federal Rules of Evidence (FRE)
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`401-403 and 802. To the extent Patent Owner relies on Exhibit 2001 for the truth
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`of the information printed in this exhibit, Petitioner objects to it as inadmissible
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`hearsay. FRE 802.
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`Patent Owner cites Exhibit 2001 for a single sentence: “Tantalum nitride can
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`be crystalline or amorphous depending upon how it is deposited.” Patent Owner’s
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`Preliminary Response (POPR) at 6; see also id. at 19, 21, 22, 35, 43, 45, and 55.
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`The description in this sentence is cumulative to the challenged ’324 patent, which
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`also discloses that tantalum nitride can be crystalline or amorphous depending on
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`how it is deposited, such as by varying the nitrogen gas ratio. See Ex. 1001 at
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`1
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`12:11-32. Thus, Exhibit 2001 is irrelevant because it needlessly presents
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`Case IPR2016-01264
`Patent 6,538,324
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`cumulative information. FRE 401-403.
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`II. Exhibit 2002
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`Petitioner objects to Exhibit 2002 under FRE 401-403 as irrelevant because
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`it was not in the prior art as of the U.S. filing date (June 19, 2000) or the foreign
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`priority filing date (June 24, 1999) of the ’324 patent. Regardless of whether the
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`’324 patent is entitled to its claim of foreign priority, a person of ordinary skill in
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`the art would not have had access to Exhibit 2002 as of the ’324 patent’s earliest
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`effective filing date and, therefore, would not have referred to this exhibit to
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`interpret any terminology in the prior-art Ding patent (U.S. 6,887,353) as Patent
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`Owner contends. See, e.g., POPR at 26, 29.
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`Exhibit 2002 is an Amendment dated February 1, 2000, from the prosecution
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`history of the patent application that eventually issued as the Ding patent.
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`According to the USPTO Public PAIR system, this application was never
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`published before issuance. As a result, the prosecution history in the Ding
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`application would not have been available to persons of ordinary skill in the art
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`until after the Ding patent issued on May 3, 2005. See 37 C.F.R. 1.14 (“Patent
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`applications that have not been published under 35 U.S.C. 122(b) are generally
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`preserved in confidence pursuant to 35 U.S.C. 122(a)”); Manual of Patent
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`Examining Procedure (M.P.E.P.) (Rev. 2, May 2004) § 1128 at 1100-22. Because
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`2
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`persons of ordinary skill in the art could not have accessed Exhibit 2002 before
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`Case IPR2016-01264
`Patent 6,538,324
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`2005, this exhibit is irrelevant to how a person of ordinary skill in the art, as of
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`June 19, 2000, or earlier, would have understood anything in the Ding or ’324
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`patents at the relevant time period. FRE 401-403.
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`Petitioner also objects to Exhibit 2002 as irrelevant under FRE 401-403
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`because this portion of the prosecution history does not modify or override the
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`express teachings in the Ding patent. Because Ding qualifies as prior art under
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`pre-AIA 35 U.S.C. 102(e), the disclosure of Ding being relied upon must be
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`present in the issued patent. M.P.E.P. 2136.02(II); see also M.P.E.P. 2136.02(III)
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`(explaining pre-AIA 102(e) prior art may be used in obviousness rejections).
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`Accordingly, Exhibit 2002 is irrelevant. FRE 401-403.
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`III. Exhibits 2003 and 2004
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`Petitioner objects to Exhibits 2003 and 2004 under FRE 401-403 as
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`irrelevant because they were not in the prior art as of the U.S. filing date (June 19,
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`2000) or the foreign priority filing date (June 24, 1999) of the ’324 patent. Exhibits
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`2003 and 2004 are printouts of certain online dictionary definitions dated
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`September 30, 2016. Patent Owner has not established that these definitions were
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`available to a person of ordinary skill in the art as of the U.S. or claimed foreign-
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`priority filing dates of the ’324 patent, or that a person of ordinary skill in the art
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`3
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`would have referred to either of these definitions to interpret any terminology in
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`Case IPR2016-01264
`Patent 6,538,324
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`the ’324 patent in the relevant time period. FRE 401-403.
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`Petitioner also objects to Exhibits 2003 and 2004 because Patent Owner has
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`not submitted evidence to authenticate either of these exhibits. FRE 901.
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`Respectfully submitted,
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`By: / Stephen E. Kabakoff/
` Stephen E. Kabakoff
` Reg. No. 51,276
` Counsel For Petitioner
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`Dated: January 3, 2017
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`4
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`CERTIFICATE OF SERVICE
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`Case IPR2016-01264
`Patent 6,538,324
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`This is to certify under 37 C.F.R. § 42.6(e) that, on this 3rd day of January
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`2017, I caused counsel of record for the Patent Owner (as listed below) to be
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`electronically served a true and correct copy of the “PETITIONER’S
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`OBJECTIONS TO PATENT OWNER’S EXHIBITS 2001-2004.”
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`Michael Fink
`mfink@gbpatent.com
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`Neil Greenblum
`ngreenblum@gbpatent.com
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`Arnold Turk
`aturk@gbpatent.com
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`By: /Sheila West/
` Sheila West
` Litigation Legal Assistant
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`Dated: January 3, 2017
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