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`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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`——————————
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`Inter Partes Review No. IPR2016-01264
`U.S. Patent No. 6,538,324
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`——————————
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`PETITIONER’S REQUEST FOR ORAL ARGUMENT
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`Pursuant to 37 C.F.R. § 42.70(a) and in accordance with the Board’s
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`IPR2016-01264
`U.S. Patent No. 6,538,324
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`Scheduling Order dated December 21, 2016 (Paper 8), Petitioner Taiwan
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`Semiconductor Manufacturing Company Limited (“TSMC”) respectfully submits
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`this Request for Oral Argument. The Board has currently scheduled the oral
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`argument in IPR2016-01264 for August 8, 2017 (Paper 8 at 7).
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`TSMC specifies the following issues to be argued during oral argument:
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` Whether claims 1-3, 5-7, and 9 of U.S. Patent No. 6,538,324 are
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`unpatentable under pre-AIA 35 U.S.C. § 103 as obvious over Zhang in
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`view of Ding;
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` Whether claims 1-3, 5-7, and 9 of the ’324 patent are unpatentable
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`under pre-AIA 35 U.S.C. § 103 as obvious over Zhang in view of Ding
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`and in further view of Sun;
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` The proper construction of independent claims 1 and 5, including the
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`claim term “first film being composed of crystalline metal containing
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`nitrogen therein”;
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` Whether Patent Owner failed to comply with the requirements for
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`filing a Motion to Amend when it failed to disclose several material
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`prior-art references known to it from the related district court
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`litigation;
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`1
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`IPR2016-01264
`U.S. Patent No. 6,538,324
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` Whether substitute claims 11-13 in Patent Owner’s Contingent Motion
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`to Amend are obvious over the instituted grounds of (1) Zhang in view
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`of Ding and (2) Zhang in view of Ding and in further view of Sun;
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` Whether substitute claims 11-13 are obvious over Zhang in view of
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`Ding and in further view of Chiang and/or Nogami;
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` Whether substitute claims 11-13 are obvious over Zhang in view of
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`Ding and Sun and in further view of Chiang and/or Nogami;
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` The proper construction of substitute claim 13, including the language
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`“solid solution”;
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` Whether substitute claim 13 lacks written description support in the
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`’324 patent;
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` Any issues identified in Patent Owner’s Request for Oral Hearing;
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` Any issues raised in either party’s Motions to Exclude; and
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` Any other issues the Board deems necessary for issuing a final written
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`decision.
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`The Board has schedule oral hearing for this proceeding on the same day as
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`the related IPR2016-01249 proceeding between the same parties concerning the
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`same patent. The proceedings are summarized in the table below:
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`2
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`IPR2016-01264
`U.S. Patent No. 6,538,324
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`
`Proceeding
`Patent
`IPR2016-01249 U.S. 6,538,324
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`Oral Argument
`August 8, 2017
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`IPR2016-01264 U.S. 6,538,324
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`August 8, 2017
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`Ground
`Ding and Zhang
`Zhang and Ding
`Zhang, Ding, and Sun
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`Petitioner requests that these two proceedings be argued in a single
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`consolidated hearing to eliminate any redundant arguments. Petitioner further
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`requests 45 minutes of argument time for the proposed consolidated hearing. But to
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`the extent the Board schedules the hearing to last longer than 90 minutes, Petitioner
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`requests half the length of the hearing be allocated to Petitioner to address these
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`issues.
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`Finally, Petitioner requests that ten spaces be reserved at the oral hearing to
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`accommodate its counsel and corporate representatives. Petitioner also requests
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`that two attorneys at Petitioner’s counsel’s table be allowed to use computers at the
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`hearing (in addition to the counsel making the argument using his or her computer
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`to show the demonstratives), to avoid the need for the parties to bring entire paper
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`copies of the record into the hearing room and to facilitate efficient answering of
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`panel questions.
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`Dated: July 12, 2017
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`Respectfully submitted,
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`By: /E. Robert Yoches/
`E. Robert Yoches,
`Lead Counsel
`Reg. No. 30,120
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`3
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`IPR2016-01264
`U.S. Patent No. 6,538,324
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that the foregoing
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`PETITIONER’S REQUEST FOR ORAL HEARING was served on July 12,
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`2017, via electronic mail directed to counsel of record for the Patent Owner at the
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`following:
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`Michael J. Fink (Reg. No. 31,827)
`mfink@gbpatent.com
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`Neil F. Greenblum (Reg. No. 28,394)
`ngreenblum@gbpatent.com
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`Arnold Turk (Reg. No. 33,094)
`aturk@gbpatent.com
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`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`Tel: 703-716-1191
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`Patent Owner has agreed to electronic service.
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`Dated: July 12, 2017
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`By: /Lauren K. Young/
`Lauren K. Young
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
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