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 Nos. IPR2016-01249 and IPR2016-01264
` U.S. Patent No. 6,538,324
` __________
` GlobalFoundries U.S. Inc.’s motions for joinder
`in Cases IPR2017-00919,-00920 were granted.
`
` DEPOSITION OF SANJAY K. BANERJEE, Ph.D.
` Washington, D.C.
` Tuesday, June 13, 2017
` 8:58 a.m.
`
`Job No.: 147285
`Pages 1 - 129
`Reported By: Joan V. Cain
`
`1 2 3 4 5 6 7 8 9 1
`
`0 11
`12 13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`Page 1 of 162
`
`IP Bridge Exhibit 2044
`TSMC v. IP Bridge
`IPR2016-01264
`
`1
`
`1
`
`
` ___________
` 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 Nos. IPR2016-01249 and IPR2016-01264
` U.S. Patent No. 6,538,324
` __________
` GlobalFoundries U.S. Inc.’s motions for joinder
`in Cases IPR2017-00919,-00920 were granted.
`
` DEPOSITION OF SANJAY K. BANERJEE, Ph.D.
` Washington, D.C.
` Tuesday, June 13, 2017
` 8:58 a.m.
`
`Job No.: 147285
`Pages 1 - 129
`Reported By: Joan V. Cain
`
`1 2 3 4 5 6 7 8 9 1
`
`0 11
`12 13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`Page 1 of 162
`
`IP Bridge Exhibit 2044
`TSMC v. IP Bridge
`IPR2016-01264
`
`1
`
`1
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`2
`
` Deposition of SANJAY K. BANERJEE, Ph.D., held
`at the law offices of:
`
` FINNEGAN HENDERSON FARABOW
` GARRETT & DUNNER, LLP
` 901 New York Avenue, Northwest
` Washington, D.C. 20001-4413
` (202) 408-4000
`
` Pursuant to Notice, before Joan V. Cain,
`Court Reporter and Notary Public in and for the
`District of Columbia.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 2 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`3
`
` A P P E A R A N C E S
`
`ON BEHALF OF PETITIONER:
` STEPHEN E. KABAKOFF, ESQUIRE
` SHAWN S. CHANG, ESQUIRE
` FINNEGAN HENDERSON FARABOW
` GARRETT & DUNNER, LLP
` 271 17th Street, Northwest
` Suite 1400
` Atlanta, Georgia 30363-6209
` Telephone: (404) 653-6400
` E-mail: stephen.kabakoff@finnegan.com
` shawn.chang@finnegan.com
`
`ON BEHALF OF CO-PETITIONER GLOBALFOUNDRIES:
` ALLEN WANG, ESQUIRE (By Telephone)
` WHITE & CASE SILICON VALLEY
` 3000 El Camino Real 5 Palo Alto Square
` 9th Floor
` Palo Alto, California 94306
` Telephone: (650) 213-0314
` E-mail: awang@whitecase.com
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 3 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`4
`
` A P P E A R A N C E S C O N T I N U E D
`
`ON BEHALF OF PATENT OWNER:
` MICHAEL J. FINK, ESQUIRE
` NEIL F. GREENBLUM, ESQUIRE (By Telephone)
` ARNOLD TURK, ESQUIRE (By Telephone)
` GREENBLUM & BERNSTEIN, P.L.C.
` 1950 Roland Clarke Place
` Reston, Virginia 20191
` Telephone: (703) 716-1191
` E-mail: mfink@gbpatent.com
` rwhitehead@gbpatent.com
` aturk@gbpatent.com
`
`ALSO PRESENT:
` Willy Chang, Esquire, TSMC
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 4 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
` C O N T E N T S
`
`5
`
`EXAMINATION OF SANJAY K. BANERJEE, Ph.D., PAGE
` By Mr. Fink 7, 121
` By Mr. Kabakoff 117
`
` E X H I B I T S
` (Attached to the Transcript.)
`IP BRIDGE EXHIBITS PAGE
`EXHIBIT 2043 Photocopied Pages from Hackh's 80
` Chemical Dictionary
`
` P R E V I O U S L Y M A R K E D E X H I B I T S
` (Attached to the Transcript.)
`TSMC EXHIBITS PAGE
`EXHIBIT 1001 US Patent No. 6,538,324 B1 32
`EXHIBIT 1003 Declaration of Dr. Banerjee in 26
` Support of Petition for Inter
` Partes Review of US Patent
` No. 6,538,324
`EXHIBIT 1005 Declaration of Dr. Banerjee in 21
` Support of Petition for Inter
` Partes Review of US Patent
` No. RE41,980
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12 13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 5 of 162
`
`
`
`6
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
` P R E V I O U S L Y M A R K E D E X H I B I T S
` C O N T I N U E D
` (Attached to the Transcript.)
`TSMC EXHIBITS PAGE
`EXHIBIT 1033 US Patent No. 6,458,255 B2 102
`EXHIBIT 1038 Declaration of Dr. Banerjee in 10
` Support of Petitioner's Reply
` to Patent Owners Response and
` Opposition to Motion to Amend
` for Inter Partes Review of
` US Patent No. 6,538,324
`
` P R E V I O U S L Y M A R K E D E X H I B I T S
` (Attached to the Transcript.)
`IP BRIDGE EXHIBITS PAGE
`EXHIBIT 2012 Excerpt from the Manual of 48
` Patent Examining Procedure,
` Original Ninth Edition
`EXHIBIT 2013 Claim Construction Memorandum 114
` and Order
`EXHIBIT 2036 Photocopied Pages from Hackh's 76
` Chemical Dictionary
`EXHIBIT 2039 US Patent No. 6,346,745 B1 85
`
`1 2
`
`3 4 5 6 7 8 9 1
`
`0
`11
`12 13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 6 of 162
`
`
`
`7
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
` P R O C E E D I N G S
` SANJAY K. BANERJEE, Ph.D.
`having been duly sworn under penalties of perjury,
`was examined and did testify as follows:
` EXAMINATION BY COUNSEL FOR PATENT OWNER
`BY MR. FINK:
` Q Good morning, Dr. Banerjee.
` A Good morning.
` Q Did I pronounce your name correctly?
` A Yes.
` Q You understand that you've submitted
`declarations in the IPRs that we're deposing you
`about today?
` A Yes.
` Q Okay. Have you ever been deposed before?
` A Yes.
` Q In what context?
` A Several ITC cases, a District case, and I
`think -- I've done several IPRs, and I think I've
`been deposed in those. I can't remember exactly.
` MR. TURK: Arnold Turk.
` MR. FINK: Arnold Turk's from my firm.
`Arnie, mute your line. Okay?
`
`1 2
`
`3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 7 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`8
`
` MR. TURK: All right.
` MR. FINK: All right. Just keep your
`line -- are you there?
` MR. TURK: Yeah.
` MR. FINK: Okay. Can you mute your line?
`Neil and Allen --
` MR. TURK: I'm going to mute.
` MR. FINK: Okay. Neil is on the line and
`Allen Wang from GlobalFoundries is also on the line.
` MR. TURK: Okay. Thanks.
`BY MR. FINK:
` Q How many IPRs have you submitted expert
`declarations in?
` A About half a dozen probably, so I've done
`two on -- with this case -- well, I've done two
`declarations for this patent and then I guess one
`for the '174 patent, and then I'm working with other
`firms that I've done five more.
` Q Is that it?
` A In the past also I believe I've done a few
`IPRs. I can't remember exactly.
` Q How many IPRs are you working on where TSMC
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 8 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`9
`
`is the petitioner?
` A Two.
` Q Presently?
` A Yes.
` Q That's the --
` A '174.
` Q Patent and the '324 patent?
` A '174 and '324, yes.
` Q And did you previously submit a declaration
`relating to the reissued '980 patent?
` A The number rings a bell. I cannot remember
`exactly. I believe I did, but I can't remember
`offhand.
` Q And are you presently involved in any other
`IPR proceedings for petitioners other than TSMC?
` A Yes.
` Q And who is that for? Who is the
`petitioner?
` A Micron.
` Q Any others?
` A Currently, no.
` Q Did you submit a declaration in support of
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 9 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`10
`
`a petition filed by GlobalFoundries?
` A Yes. Yeah. So what happened was -- yeah.
`So Global joined Micron -- see, initially, I started
`with Micron, but then Global decided to join Micron
`on two patents. I remember that.
` Q Do you remember what patents?
` A They were related to an atomic layer
`deposition by Professor Gordon from Harvard. I
`don't recall the patent numbers offhand.
` Q Were any of the patents owned by IP Bridge?
` A No.
` MR. KABAKOFF: Objection, relevance.
` (IP Bridge Exhibit 1038 was
`previously marked for identification and was
`attached to the deposition transcript.)
`BY MR. FINK:
` Q I'd like to give you a copy of your
`declaration in support of petitioner's reply in the
`opposition to motion to amend, which has previously
`been marked Exhibit 1038.
` Do you recognize this exhibit?
` A Yes.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 10 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`11
`
` Q And that's your signature at the last page
`of the exhibit?
` A Yes.
` Q How did you prepare this declaration?
` MR. KABAKOFF: Objection to form.
` THE WITNESS: Well, I had multiple form
`meetings with the lawyers, and this -- these are my
`opinions, and I wrote parts of it, and parts of it
`the lawyers wrote under my direction.
`BY MR. FINK:
` Q Which parts did you write?
` A A lot of the sections related to the
`technical discussions I wrote.
` Q Okay.
` A It was a collaborative effort, so the legal
`parts the lawyers provided in terms of legal
`standards and things like that.
` Q Did you receive a first draft before your
`discussions with your counsel?
` A So we had a lot of phone conversations
`where they asked me about the technical aspects, and
`I did receive a first draft, which I edited and
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 11 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`12
`
`added to and things like that.
` Q Okay. So let's turn to page 2 -- actually,
`page 3 of 23 of Exhibit 1038.
` A Page 3 as in --
` Q Page 3 of 23. We'll use the numbers in the
`bottom left just for convenience.
` A Okay.
` Q And there's a section Materials Reviewed.
` A Yes.
` Q And the Materials Reviewed start on page 3
`and continue on pages 4, 5, 6, and 7; is that
`correct?
` A Yes.
` Q And you've reviewed all of these exhibits
`and other documents?
` A I reviewed them.
` MR. KABAKOFF: Objection to form.
` THE WITNESS: But some of them I've
`reviewed -- the ones that I've opined on, I reviewed
`in greater depth.
`BY MR. FINK:
` Q Okay. But you've reviewed all of them?
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 12 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`13
`
` A To some extent, yes.
` Q Approximately how much time have you spent
`reviewing these documents?
` A I'd have to guess, but I've been working on
`this IPR total, less than 100 hours, somewhere
`between ten to a hundred hours I think.
` Q Between ten to a hundred? That's quite a
`spread.
` MR. KABAKOFF: Objection, form.
` THE WITNESS: I'd have to look at my notes.
`Maybe 50 to a hundred.
`BY MR. FINK:
` Q When you say 50 to a hundred, you mean the
`total hours spent working on this IPR?
` A Right.
` Q And by this IPR, you mean the two IPRs
`relating to the '324 patent?
` A No. I mean -- yeah, the two IPRs related
`to the '324, yeah, but not the '174.
` Q I'd like you to turn to page 7 of Exhibit
`1038, and it refers to level of ordinary skill in
`the art?
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 13 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`14
`
` A Yes.
` Q And did you prepare this section?
` MR. KABAKOFF: Objection to form.
` THE WITNESS: Once again, this was written
`under my direction. It was a collaborative effort.
`I don't believe I wrote the first draft for this.
`BY MR. FINK:
` Q Okay. On page 8, the third line from the
`end of the first paragraph it says I was at least a
`person of ordinary skill in the art when the
`application leading to the '324 patent was filed.
` What is your basis for that statement?
` A Well, I believe the patent was filed in
`June 1999. I have a Ph.D. in electrical
`engineering, of course, and a master's, and I've
`been working in the field of semiconductor
`fabrication including CMOS.
` Q Mm-hmm.
` A I started at Texas Instruments in '87.
`Even prior to that when I did my Ph.D. from '83 to
`'87 at the University of Illinois, I worked on
`semiconductor fabrication, device fabrication, and
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 14 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`15
`
`then -- so certainly counting my days from TI, so
`'83 to 1999 I've worked on CMOS device fabrication
`issues that are pertinent to this patent.
` Q When you say you worked on issues, what
`type of issues? Design issues?
` A The device fabrication issues,
`characterization.
` Q Have you actually fabricated device --
`semiconductor devices?
` A Yes.
` Q You've worked with sputtering chambers?
` A Yes. When you say work with, at university
`I have graduate students that I supervise.
` Q Okay. But when did you start at the
`university?
` A In '87.
` Q Okay. So prior to 1999, did you do any
`actually sputtering of tantalum layers?
` A I've worked with sputtering certainly of
`titanium layers, which is a transition metal in the
`same category as tantalum. I don't recall if I have
`worked with tantalum since leaving.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 15 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`16
`
` Q Have you worked with any tantalum nitride
`layers?
` MR. KABAKOFF: Objection to form.
` THE WITNESS: If work with various alloys
`of titanium -- of transition metals and other
`elements, so I remember working with -- offhand I
`couldn't remember if I worked specifically with
`tantalum and nitrogen alloys, no.
`BY MR. FINK:
` Q So as you sit here today, you have no
`recollection of any actual experience with
`sputtering of tantalum or tantalum nitride layers?
` MR. KABAKOFF: Objection, form.
`BY MR. FINK:
` Q Is that correct?
` A I have experience with sputtering of metals
`of this category.
` Q Okay. I'll try it again. I'm going to ask
`you a question, and I'd appreciate it, if possible,
`it could be answered yes or no, I'd appreciate if
`you'd answer yes or no.
` MR. KABAKOFF: Objection, argumentative.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 16 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`17
`
` THE WITNESS: Yes.
`BY MR. FINK:
` Q Dr. Banerjee, do you have any recollection
`of any actual experience with the sputtering of
`tantalum or tantalum nitride layers?
` MR. KABAKOFF: Objection.
` THE WITNESS: Offhand at this point, I do
`not recall, but I've, once again, worked with
`sputtering of similar systems where the teachings I
`believe apply.
`BY MR. FINK:
` Q Have you worked with a nitride layer where
`you later -- strike that.
` Have you worked with nitrogen in sputtering
`processes?
` A I believe I have in the case of deposition
`of silicon nitride targets, and the other thing that
`I forgot to mention was I've been teaching the
`graduate course on semiconductor device fabrication
`at university since 1987, where we discuss all these
`aspects in the course.
` Q Again, I'm trying to find your actual
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 17 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`18
`
`experience, and you have a very long CV with a lot
`of things on it. Right now I'm trying to find out
`your experience with tantalum, tantalum nitride, and
`nitrogen. So have you been involved in any
`sputtering processes where there was a flow of
`nitrogen in the sputtering chamber?
` A The sputtering systems that I have
`certainly have nitrogen plumbed to them, and I
`believe we've done experiments where, you know,
`we've done reactive sputtering with nitrogen, but
`offhand I cannot remember a specific.
` Q As far as you know, you've not conducted
`any procedures involving nitrogen with tantalum or
`titanium or a similar metal?
` MR. KABAKOFF: Objection to form.
` THE WITNESS: I cannot remember working
`specifically with a combination of tantalum and
`nitrogen.
`BY MR. FINK:
` Q Have you been involved in any sputtering
`processes where there was a flow of nitrogen and the
`nitrogen was turned off?
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 18 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`19
`
` MR. KABAKOFF: Objection to form.
` THE WITNESS: At this point offhand, I do
`not recall, but I have worked with sputtering
`systems involving reactive sputtering where we
`change the flow of one gas at some point or the
`other, but I don't recall specifically turning off
`nitrogen in the middle of the process.
`BY MR. FINK:
` Q Have you ever been involved in measuring
`the nitrogen content of any tantalum or titanium
`alloys from a process you fabricated?
` A I do not recall, but I believe I've
`measured nitrogen concentrations as a function of
`depth in other materials.
` Q What type of materials?
` A Semiconductor materials, such as silicon
`oxynitrides, gate dielectrics and things like that.
` Q What about measuring nitrogen in films made
`of a crystalline metal such as tantalum; have you
`ever measured a nitrogen content there?
` A I don't believe I have done that specific
`combination, but once again, these techniques carry
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 19 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`20
`
`over from one particular material system to the
`other, things like secondary ion mass spectroscopy
`is one example which I'm very familiar with.
` Q I'd like to turn to page 9 of 23 of your
`declaration, and it's entitled "Claim Construction,"
`and paragraph 10 says I was informed by counsel
`that, for purposes of this Inter Partes Review
`proceeding, the claims in the '324 patent should
`have their broadest reasonable construction in light
`of the patent specification.
` What is your understanding of broadest
`reasonable construction?
` A My understanding is that's how person of
`ordinary skill in the art would understand it
`reading the patent.
` Q And did you apply that understanding
`throughout your declaration?
` A Yes.
` Q And throughout your analysis you applied
`that same understanding in determining whether --
`when analyzing the claims of the '324 patent?
` A Yes.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 20 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`21
`
` Q Have you ever been involved in an IPR where
`the patent was going to expire within 18 months of
`institution?
` MR. KABAKOFF: Objection, relevance.
` THE WITNESS: I do not recall.
`BY MR. FINK:
` Q Are you familiar in certain IPRs that a
`District Court claim interpretation is applied?
` MR. KABAKOFF: Objection, relevance.
` THE WITNESS: I do not recall, no.
` (IP Bridge Exhibit 1005 was
`previously marked for identification and was
`attached to the deposition transcript.)
`BY MR. FINK:
` Q Just in an attempt to refresh your
`recollection, I have select pages of basically -- a
`front page, one of the internal pages, and a
`signature page of a declaration that bears your name
`that was submitted in IPR 2016-01331, which was
`marked as TSMC Exhibit 1005 in that proceeding.
` Does this refresh your recollection of
`whether you filed a declaration relating to the
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 21 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`22
`
`reissue of the 41,980 patent?
` A I remember the number 980, as I mentioned
`before.
` Q And on the last page of that document, is
`that your signature?
` A Yes.
` MR. KABAKOFF: Objection to the extent the
`document is incomplete.
`BY MR. FINK:
` Q I'd like you to look at the second page of
`the document, which is 32 of 174. And there's one
`paragraph that relates to claim construction.
` Do you see that paragraph, 56?
` A Yes.
` Q It says I have been told that in District
`Court claim terms are given their ordinary and a
`custom meaning as understood by a person of ordinary
`skill in the art as of the applicable priority date.
` Do you understand that?
` A Yes.
` Q Okay. How is that different from your
`understanding of broadest reasonable interpretation
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 22 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`23
`
`that you just testified related to how one of
`ordinary skill in the art would understand the
`terms?
` MR. KABAKOFF: Objection to form.
` THE WITNESS: I don't really review this
`'980 declaration to refresh my memory to be more
`specific, but I can speak to the claim construction
`statement in the current IPR. So my understanding
`of the broadest reasonable construction is, for
`instance, you look to what's given in the
`specifications of the patent, for example, or the
`meaning of these terms in dictionaries or in the
`technical literature.
`BY MR. FINK:
` Q So that's pretty much -- the way you
`understand broadest reasonable interpretation sounds
`very similar to how a District Court would interpret
`a claim in view of the specification and
`dictionaries and other literature as to how a person
`of ordinary skill in the art would understand the
`claim terms, correct?
` A Once again, I haven't looked at this '980
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 23 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`24
`
`IPR in a while so really --
` Q It's a legal statement, construction under
`two different standards, District Court standard and
`BRI standard. And I want to understand your
`understanding if there's a difference between the
`two, and if there is, what difference do you see?
` MR. KABAKOFF: Objection, relevance.
`BY MR. FINK:
` Q It appears that both relate to the
`understanding of a person of ordinary skill in the
`art at the time of the invention.
` A Well, obviously, I'm not an attorney, so
`without reviewing the '980 IPR in detail, I couldn't
`at this point tell you what the differences --
` Q Has nothing to do with the patent. It has
`to do with the standard that you would review the
`patents.
` A Right.
` Q And I just want to know, based on your
`understanding of the two standards, District Court
`type construction and broadest reasonable
`interpretation, in your experience, is there any
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 24 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`25
`
`difference?
` MR. KABAKOFF: Objection, relevance.
` THE WITNESS: Without, frankly, refreshing
`my memory about the legal claim construction issues
`that were explained to me during that other IPR
`proceeding, I couldn't tell you the differences of
`nuances between the two standards.
`BY MR. FINK:
` Q At this moment, are you aware of any
`differences between the two claim construction
`standards?
` A When I spoke to my lawyers in context of
`the current IPR, my understanding of broadest
`standards was as I explained before, how a POSITA
`would understand those claim terms based on the
`claim specifications, dictionary meanings, relevant
`technical literature and things like that.
` Q And other external sources?
` MR. KABAKOFF: Objection, form.
` THE WITNESS: Other relevant external
`sources.
`BY MR. FINK:
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 25 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`26
`
` Q Did you apply that understanding of
`broadest reasonable construction throughout your
`analysis in both declarations in both of the IPRs
`relating to the '324 patent?
` A I believe I did, but certainly for this
`one. I'd have to look at my first declaration to
`confirm that.
` MR. FINK: I don't have a copy for you.
`I'm sorry.
` (IP Bridge Exhibit 1003 was
`previously marked for identification and was
`attached to the deposition transcript.)
`BY MR. FINK:
` Q But here's Exhibit 1003 filed in these
`IPRs.
` MR. FINK: And you're welcome to look over
`his shoulder if you need it. I will represent it is
`an accurate copy of his declaration including CV
`filed as Exhibit 1003.
`BY MR. FINK:
` Q The claim construction section is on page
`32.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 26 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`27
`
` MR. KABAKOFF: I'm sorry. Counsel, which
`proceeding is this from? The 1264 or the 1249?
` MR. FINK: Isn't it the same declaration in
`both?
` MR. KABAKOFF: I just want to print out the
`same copy he's looking at.
` MR. FINK: Again, it's the same declaration
`in both. You filed one for both proceedings.
` MR. KABAKOFF: I just want to make sure
`whatever I print is the same thing he's looking at.
` MR. FINK: As far as I understand, it's the
`exact same declaration in both proceedings. If not,
`let me know because then we might have a problem.
`BY MR. FINK:
` Q Okay. So it's paragraph 66 on page 32.
` A Yes.
` Q Okay. Does that help you?
` A Yes.
` Q Okay. So your opinions are consistent with
`your understanding of the broadest reasonable
`construction?
` A Yes.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 27 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`28
`
` Q How do you understand the words "in light
`of the patent specification," going back to
`paragraph 10 on page 9 of 23 of your second
`declaration?
` A So the way I understood that was you look
`to the sources that we've talked about a few minutes
`back when talking about those terms, but in some
`cases the patentee may act as his or her own
`lexicographer, where he or she may define the terms
`in the specifications slightly differently from how
`it's described in the dictionary for example. In
`which case, the definition in the dictionary would
`take precedence --
` Q What is your --
` A -- the description in the specifications
`would take precedence.
` Q So is that the only time you consider the
`specification, to understand the meaning of the
`claim terms?
` MR. KABAKOFF: Objection.
` THE WITNESS: I'm not quite sure I
`understand the question.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 28 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`29
`
`BY MR. FINK:
` Q Well, you mentioned that you can look to
`the specification to determine if the patentee was
`his own lexicographer and defined terms in a certain
`way, correct?
` A Yes. Right.
` Q And earlier you said you looked at the
`specification and dictionary definitions and
`relevant literature to determine the scope and
`meaning of the terms used in the claims.
` A Yes.
` Q So what does it mean to be reasonable in
`light of the patent specification?
` MR. KABAKOFF: Objection to form.
` THE WITNESS: My understanding is when you
`interpret claim terms, you look to the
`specifications, not for limiting the claim terms --
`so the specifications do not limit the claim terms,
`but, again, look to the specifications to interpret
`the terms in the claims and --
`BY MR. FINK:
` Q To understand what they mean?
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 29 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`30
`
` A Yes.
` Q Well, are you -- what would it be if it
`were unreasonable in light of a patent
`specification? What's your understanding of that?
` A I mean, for instance, if one interprets a
`word in a claim in a way that's inconsistent with
`the way it's been used in the specification, that
`would be an unreasonable interpretation.
` Q If it's overly broad, would it be
`unreasonable?
` MR. KABAKOFF: Objection, form.
` THE WITNESS: I mean, if it was overly
`broad to the extent that it would contradict the use
`of the term in the specifications, I think that
`would be unreasonable.
`BY MR. FINK:
` Q What if it's overly broad as to the
`teachings of the patent, still would be a reasonable
`interpretation in your opinion?
` A Aren't the specifications part of the
`teachings of the patent?
` Q Yes.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 30 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`31
`
` A So it seems like you're asking the same
`thing.
` Q So as long as the claim terms are not
`construed overly broadly in view of the teachings of
`the specification, they're considered reasonable; is
`that correct?
` MR. KABAKOFF: Objection, form.
` THE WITNESS: Yeah, as long as you don't
`interpret the terms in a way that it's inconsistent
`with the explanation in the specifications.
`BY MR. FINK:
` Q So in your opinion, if the claim terms were
`construed much more broadly than what was disclosed
`in the patent specification, that would be
`unreasonable; is that correct?
` A If the claim terms were interpreted in a
`way that's inconsistent -- when you say much more
`broadly, I interpret that as inconsistent with the
`way they're described in the specifications. That
`would be unreasonable.
` Q Okay. So in preparing your declaration --
`I'm looking at the opinions beginning on page 9 of
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 31 of 162
`
`
`
`Transcript of Sanjay K. Banerjee, Ph.D.
`Conducted on June 13, 2017
`
`32
`
`23 -- and you reviewed patent owner's substitute
`claims 11 through 13?
` A Yes.
` Q And you construed all the claim terms
`recited in those claims?
` A Yes.
` Q So substitute claim 11 at the bottom of
`page 8 begins a multi-layered wiring structure
`comprising. What is your understanding of the
`term "comprising"?
` A Consisting of.
` Q And by that does it -- is the term open
`ended? It can include other things or just these
`things?
` A May I have a copy of the patent, please?
` Q Sure.
` (IP Bridge Exhibit 1001 was
`previously marked for identification and was
`attached to the deposition transcript.)
`BY MR. FINK:
` Q Here's a copy of Exhibit 1001, which is
`U.S. Patent No. 6,538,324, which is the patent which
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Page 32 of 162
`
`
`
`Transcript of Sanjay
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
