Case IPR2016-01264 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. IPR2016-012641
`U.S. Patent No. 6,538,324
`____________
`
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`1 GlobalFoundries U.S. Inc.’s motion for joinder in Case IPR2017-00920 was
`
`granted.
`
`
`
`
`
`
`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. IPR2016-012641
`U.S. Patent No. 6,538,324
`____________
`
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`1 GlobalFoundries U.S. Inc.’s motion for joinder in Case IPR2017-00920 was
`
`granted.
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.64, Patent Owner moves to exclude Exhibit 1037
`
`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`
`for the reasons discussed herein.
`
`Exhibit No.
`
`Description
`
`1037
`
`Invalidity Contentions, Godo Kaisha IP Bridge 1 v. Broadcom
`
`Limited, et al., Case No. 2:16-cv-134
`
`
`I.
`
`EXHIBIT 1037 SHOULD BE EXCLUDED
`
`The Federal Rules of Evidence (“FRE”) govern the admissibility of evidence
`
`in inter partes review proceedings. 37 C.F.R. § 42.62; Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,758 (Aug. 14, 2012). Under the Federal Rules of Evidence,
`
`the proponent of an exhibit is required to “produce evidence sufficient to support a
`
`finding that the item is what the proponent claims it is.” FRE 901(a); Standard
`
`Innovation Corp. v. Lelo, Inc., IPR2014-00148, Paper 41, at 11 (PTAB 2015).
`
`Furthermore, the Federal Rules of Evidence prohibit the use of hearsay. FRE 801-
`
`803.
`
`Patent Owner timely objected to Exhibit 1037 for lack of authentication
`
`under FRE 901, as irrelevant under FRE 401-403, and to the extent Petitioner
`
`relied on this Exhibit for the truth of the statements set forth therein, Patent Owner
`
`objected to it as inadmissible hearsay under FRE 802. See Patent Owner’s
`
`Objections, filed May 26, 2017 (Paper 22, pp. 2-3). Petitioner cited to Exhibit
`
`1037 in Petitioner’s Opposition to Patent Owner’s Contingent Motion To Amend,
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`
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`1
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`
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`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`
`filed May 22, 2017 (Paper 20, pp. 2-3). In response to Patent Owner’s Objections,
`
`on June 12, 2017, Petitioner served supplemental evidence (TSMC Exhibit 1039,
`
`and its cited exhibits TSMC Exhibits 1039A-1039F), but the supplemental
`
`evidence does not overcome these rejections.
`
`As explained in more detail below, Exhibit 1037 should be excluded for lack
`
`of authentication and inadmissible hearsay.
`
`A. Exhibit 1037 Has Not Been Properly Authenticated
`
`
`
`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. In response to
`
`Patent Owner’s objections, Petitioner served supplemental evidence. In an attempt
`
`to authenticate Exhibit 1037, Petitioner served a declaration from Thomas E.
`
`Gorman (identified as TSMC Exhibit 1039), an attorney representing Petitioner
`
`TSMC. TSMC is not a party to the IP Bridge litigation Godo Kaisha IP Bridge 1 v.
`
`Broadcom Limited, et al., Case No. 2:16-cv-134. Mr. Gorman states he was
`
`“provided” a copy of the document which TSMC filed as Exhibit 1037. Exhibit
`
`1039, ¶ 3. Mr. Gorman further states that “Exhibit 1037 is a true and correct copy
`
`… as received from defendants’ counsel.” Exhibit 1039, ¶ 4. Mr. Gorman,
`
`however, lacks first-hand personal knowledge to authenticate Exhibit 1037. At
`
`best, Mr. Gorman can testify that a document was provided to him by defendants’
`
`counsel and that the document was marked as Exhibit 1037. Mr. Gorman is not
`
`
`
`2
`
`
`
`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`
`representing a party in the IP Bridge litigation, and therefore lacks first-hand
`
`personal knowledge about documents which may have been served in the litigation
`
`but are not filed on the public record. Mr. Gorman’s declaration is therefore
`
`inadequate to authenticate Exhibit 1037. For reasons known only to TSMC, it
`
`chose not to file a declaration by a person with first-hand personal knowledge
`
`about the document marked as Exhibit 1037. Accordingly, Exhibit 1037 should be
`
`excluded for lack of authentication under FRE 901.
`
`Additionally, it is notable that Petitioner raised substantially the same
`
`objection against Patent Owner’s Exhibits 1045 and 1046. See Petitioner’s
`
`Objections To Patent Owner’s Exhibits 2045 And 2046, Paper 27, filed June 28,
`
`2017 (“Petitioner’s Objections”). In Petitioner’s Objections, Petitioner objected
`
`stating that the “paralegal did not further identify any particular ‘litigation
`
`counsel’” which provided the unredacted version of the document marked as
`
`Exhibit 2045. Mr. Gorman likewise did not identify the counsel for the defendants
`
`who provided the document marked by TSMC as Exhibit 1037.
`
`Petitioner also objected stating that the paralegal did not “explain how or
`
`why” Exhibit 2045 was confirmed to be “correct” copy. Again, Mr. Gorman
`
`cannot confirm Exhibit 1037 is true and correct other than to say he received it
`
`from a counsel for the defendants.
`
`
`
`3
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`
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`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
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`Mr. Gorman lacks first-hand personal knowledge to authenticate Exhibit
`
`1037. Moreover, in view of Petitioner’s substantially similar objections with
`
`respect to Patent Owner’s Exhibits 2045 and 2046, Exhibit 1037 should be
`
`excluded. Accordingly, Exhibit 1037 should be excluded for lack of authentication
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`under FRE 901.
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`B. Exhibit 1037 Contains Inadmissible Hearsay
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`Exhibit 1037 should also be excluded as hearsay under FRE 802 as it is 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)(“The hearsay and authentication problems associated with
`
`Exhibits 2002–2023 are glaring. Globeride provided no evidence to establish that
`
`any of Exhibits 2002–2023 were authentic. Globeride also failed to explain how
`
`any exception to the rule against admitting hearsay applied to any of Exhibits
`
`2002–2023 or why any of Exhibits 2002–2023 contained statements that were not
`
`hearsay. We conclude that Fed. R. Evid. 802 and 901 both justify excluding
`
`Exhibits 2002–2023 from evidence.”).
`
`For this additional reason, Exhibit 1037 should be excluded as inadmissible
`
`hearsay under FRE 802.
`
`
`
`4
`
`
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`II. CONCLUSION
`
`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`
`For the reasons discussed herein, the Board should exclude Exhibit 1037.
`
`
`
`
`
`Dated: July 12, 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
`
`
`
`
`
`5
`
`{R50502 03165183.DOC}
`
`
`
`Case IPR2016-01264 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 MOTION TO EXCLUDE EVIDENCE
`
`was served by electronic mail on this 12th day of July, 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;
`Christopher P. Carroll (christopher.carroll@whitecase.com); and
`Shamita Etienne-Cummings (setienne@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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