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