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 OPPOSITION TO
`
`PETITIONER’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 OPPOSITION TO
`
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`1 GlobalFoundries U.S. Inc.’s motion for joinder in Case IPR2017-00920 was
`
`granted.
`
`
`
`
`
`
`
`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
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`Petitioner’s Motion To Exclude Evidence (“Motion”) seeks to exclude
`
`Exhibits 2002-2004, 2016-2017, 2022-2027, 2034-2035, 2037 and 2045. For the
`
`reasons set forth herein, Petitioner’s objections have no merit and none of Patent
`
`Owner’s exhibits should be excluded.
`
`I.
`
`Exhibit 2002
`
`Exhibit 2002, a portion of the prosecution history of the Ding patent (Exhibit
`
`1005), is not irrelevant. Exhibit 2002 is evidence of how a person having ordinary
`
`skill in the art (“PHOSITA”) would have understood Ding at the relevant time
`
`period. Exhibit 2011, ¶¶101-103. Regardless of the availability of Ding’s
`
`prosecution history, a PHOSITA reading Ding would have understood Ding to
`
`teach the desirability of a layer of pure tantalum for contacting a copper layer,
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`which is simply confirmed by Ding’s prosecution history. Exhibit 2011, ¶103.
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`In In re Hogan, 559 F.2d 595 (CCPA 1977), the Court stated: “This court
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`has approved the use of later publications as evidence of the state of the art existing
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`on the filing date of an application.” Id. at 605 (emphasis in original); see also
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`Gould v. Quigg, 822 F.2d 1074, 1078 (Fed. Cir. 1987)(“It was not legal error for
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`the district court to accept the testimony of an expert who had considered a later
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`publication in the formulation of his opinion…”); Plant Genetic Sys., N.V. v.
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`DeKalb Genetics Corp., 315 F.3d 1335, 1344 (Fed. Cir. 2003) (“[T]he district
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`1
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`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
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`court properly used later reports as evidence of the state of the art existing in
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`1987.”).
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`For at least these reasons, Exhibit 2002 is not irrelevant, and in any event,
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`the Board should take judicial notice under FRE 201 of undisputed statements
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`contained therein, and afford Exhibit 2002 whatever weight it deems appropriate.
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`Accordingly, Exhibit 2002 should not be excluded.
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`II. Exhibit 2003 and 2004
`
`Exhibits 2003 and 2004 are dictionary definitions for “amorphous” and
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`“nitride.” Petitioner’s objections to Exhibits 2003 and 2004 have no merit.
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`In response to Petitioner’s objections, Patent Owner served as supplemental
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`evidence, and later filed as Exhibits 2008 and 2009, earlier dated dictionary
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`definitions for “amorphous” and “nitride.” Petitioner does not seek to exclude
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`Exhibits 2008 and 2009. Not surprisingly, the definitions of “amorphous” and
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`“nitride” have not changed. Thus, although the definitions may be cumulative due to
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`Petitioner’s original meritless objections, this is truly an argument of form over
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`substance, and unnecessarily distracts the Board from pertinent matters.
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`In Google Inc. v. Intellectual Ventures II LLC, IPR2014-01031, Paper 41
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`(December 7, 2015), Intellectual Ventures moved to exclude a dictionary definition
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`taken from an on-line dictionary, arguing that the dictionary definition was
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`published long after the priority date so it was not relevant. The Board held that
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`2
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`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
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`“Intellectual Ventures’s motion is without merit.” Id. at 10 (emphasis added).
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`The Board explained:
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`It is well settled that judges are free to consult dictionaries at
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`any time in order to better understand the underlying technology. See
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`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1585 n.6 (Fed.
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`Cir. 1996). Judges may also consult dictionary definitions when
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`construing claim terms so long as the dictionary definition does not
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`contradict any definition found in or ascertained by a reading of the
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`patent documents. Id.
`
`Id.
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`The above rationale is applicable to the present Motion, and accordingly,
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`Petitioner’s Motion “is without merit” and should be denied. Accordingly, Exhibits
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`2003 and 2004 should not be excluded.
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`III. Exhibits 2016, 2017, 2022-2027, 2034, and 20352
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`Petitioner originally objected to the following ten (10) English translations
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`submitted by Patent Owner: Exhibits 2014, 2016, 2018, 2020, 2022, 2024, 2026,
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`2028, 2030, and 2034. Petitioner asserted that “there is insufficient evidence to
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`support a finding that these exhibits are true and accurate translations by qualified
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`
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`2 The Exhibits referenced in this section and the following sections, i.e., Exhibits
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`2016, 2017, 2022-2027, 2034, 2035, 2037 and 2045 relate to the Contingent
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`Motion To Amend.
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`
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`3
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`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
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`translators.” Paper 17, p.3. In the Motion, Petitioner seeks to exclude five (5) of
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`these translations, i.e., Exhibits 2017, 2023, 2025, 2027 and 2035.
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`Exhibits 2017, 2023, 2025, 2027 and 2035 are English translations of
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`Japanese documents Exhibits 2016, 2022, 2024, 2026 and 2034. Each translation
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`includes a certification attesting to the accuracy of the translation. Petitioner has
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`not cited any basis for its assertion that there is insufficient evidence to support a
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`finding that these exhibits are true and accurate translations. Petitioner has not
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`pointed to any inaccuracies, or any good faith basis to doubt the accuracy of any of
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`the translations. Rather, petitioner challenges the certification accompanying each
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`translation. Petitioner’s objections to the translations have no merit. The
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`certification accompanying each translation satisfies the requirements of 37 C.F.R.
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`§42.63(b).
`
`37 C.F.R. §42.63(b) states: “When a party relies on a document or is
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`required to produce a document in a language other than English, a translation of
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`the document into English and an affidavit attesting to the accuracy of the
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`translation must be filed with the document.” A declaration under 28 U.S.C. 1746
`
`may be used as an affidavit. 37 C.F.R. § 42.2. A declaration may be used in lieu
`
`of an oath if the declarant is, on the same document, warned that willful false
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`statements and the like are punishable by fine or imprisonment. 37 C.F.R. § 1.68.
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`
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`4
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`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
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`Page 1 of Exhibits 2017, 2023, 2025, 2027 and 2035 is a “Translator’s
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`Certificate Of Translation,” provided by MultiLing Corporation, “a professional
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`translation company of multiple languages including Japanese and English.” Each
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`Certificate states that MultiLing Corporation “certifies” that “it has translated from
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`the original document to the translated document identified below, and to the best
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`of its knowledge, information, and belief the translation of that document is
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`accurate as a publication quality translation.” MultiLing Corporation further
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`“certifies” that “these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 of Title 18 of the United States Code.” Additionally, each
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`certification is signed and duly notarized. Accordingly, MultiLing’s Translator’s
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`Certificates Of Translation satisfy the requirements of 37 C.F.R. §42.63(b).
`
`There is no good faith basis to challenge the veracity or accuracy of any of the
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`English translations (or the certifications), i.e., Exhibits 2017, 2023, 2025, 2027 and
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`2035. Furthermore, Petitioner did not seek to cross-examine the person who signed
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`the “Translator’s Certificate Of Translation.”
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`The “Translator’s Certificate Of Translation” submitted with each of
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`Exhibits 2017, 2023, 2025, 2027 and 2035 satisfy 37 C.F.R. §42.63(b).
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`Accordingly, none of Exhibits 2016, 2017, 2022-2027, 2034, and 2035 should be
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`excluded. However, should the Board determine that there is a defect in a
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`5
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`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
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`“Translator’s Certificate Of Translation,” Patent Owner respectfully requests the
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`Board deny the motion to exclude, as the Board has discretion, under 37 C.F.R.
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`§42.5(b), to waive any requirement of 37 C.F.R. Part 42, which includes the
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`requirement in §42.63(b) to include attesting affidavits with translations of foreign-
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`language documents.
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`IV. Exhibit 2037
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`Exhibit 2037 is the Declaration Of Harlan Rusty Harris, Ph.D. in support of
`
`Patent Owner’s Contingent Motion to Amend. Petitioner objects to Exhibit 2037
`
`under FRE 702 alleging the opinions do not disclose the underlying facts or data
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`on which the opinions are based. FRE 702 states:
`
` A witness who is qualified as an expert by knowledge, skill,
`
`experience, training, or education may testify in the form of an
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`opinion or otherwise if:
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`(a) the expert’s scientific, technical, or other specialized
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`knowledge will help the trier of fact to understand the evidence
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`or to determine a fact in issue;
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`(b) the testimony is based on sufficient facts or data;
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`(c) the testimony is the product of reliable principles and
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`methods; and
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`(d) the expert has reliably applied the principles and methods
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`to the facts of the case.
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`6
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`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
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`Even a cursory review of Dr. Harris’ declaration (Ex.2037) reveals “the
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`testimony is based on sufficient facts.” In Ex.2037, ¶¶12-17, Dr. Harris discloses
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`the documents that he reviewed. In ¶¶18-26, Dr. Harris discloses his
`
`understanding of the relevant legal standards. In ¶¶27-29, Dr. Harris discusses a
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`person having ordinary skill in the art. In ¶¶31-41, Dr. Harris discusses the support
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`for the substitute claims in the application that issued as the ‘324 patent. In ¶¶42-
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`65, Dr. Harris discusses the state of the art and the ‘324 patent. In ¶¶66-86, Dr.
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`Harris discusses the patentability of the substitute claims over the prior art. In
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`¶¶70, 71, Dr. Harris states why the substitute claims are patentable over the prior
`
`art:
`
`70. There is no prior art by itself nor is there any combination of
`
`prior art that teaches or suggests the recited combination of features.
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`There is no teaching or suggestion in the prior art to provide a multi-
`
`layered barrier film having a film composed of amorphous metal
`
`nitride upon which is directly another film composed of crystalline
`
`metal containing nitrogen which contains nitrogen in a smaller content
`
`than that the film composed of amorphous metal nitride, wherein the
`
`nitrogen is present throughout the first film (Substitute Claim 11), or
`
`which further includes a copper film formed on the first film, the
`
`copper film being in direct contact with the first film, and the first film
`
`contains nitrogen in a portion being in contact with the copper film
`
`(Substitute Claim 12).
`
`
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`7
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`
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`71. Substitute Claim 13 further recites that the first film being
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`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
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`composed of crystalline metal containing nitrogen therein is a solid
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`solution; and that a copper film is formed on and in direct contact with
`
`said first film. There is no prior art that teaches or suggests this
`
`combination of features.
`
`
`
`In Ex.2037, ¶¶73-82, Dr. Harris discusses why the Substitute Claims 11-13
`
`are patentable over Ding (Ex.1005) and Zhang (Ex.1004), and then in ¶¶83(a)-(y),
`
`Dr. Harris discusses other references and identifies significant facts about each,
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`upon which he bases his opinion:
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`None of the above discussed prior art references and none of any
`
`prior art that I am aware of teaches or suggests a diffusion barrier
`
`layer including the structural relationship and features of the
`
`multi-layer diffusion barrier recited in the Substitute Claims.
`
`Ex.2037, ¶84.
`
`Dr. Harris concludes by stating:
`
`For all of the foregoing reasons, it is my opinion that the
`
`Substitute Claims are patentable, that is the Substitute Claims
`
`would not have been anticipated or obvious to a PHOSITA at the
`
`relevant time over the above discussed prior art or combinations
`
`thereof.
`
`Ex.2037, ¶86.
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`8
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`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
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`
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`Additionally, Dr. Harris was cross-examined on May 5, 2017, and the
`
`transcript of the deposition was filed by Petitioner as Exhibit 1036. Petitioner’s
`
`counsel had the opportunity to question Dr. Harris about his declaration and the
`
`underlying facts therein.
`
`In view of the above, Exhibit 2037 satisfies the requirements of FRE 702,
`
`and his testimony is clearly “based on sufficient facts.”
`
`
`
`Lastly, Petitioner argues that Exhibit 2037 should be excluded under Rule
`
`42.65(a). Motion, p.13. Rule 42.65 is not a proper basis to exclude expert
`
`testimony. Rather, the Rule provides that “Expert testimony that does not disclose
`
`the underlying facts or data on which the opinion is based is entitled to little or no
`
`weight.” Exhibit 2037 should not be excluded, and the Board can afford Dr.
`
`Harris’ testimony the weight that the Board deems appropriate.
`
`V. Exhibit 2045
`
`Exhibit 2045 is a redacted copy of the Invalidity Expert Report of Chris
`
`Mack, served by the defendants in Godo Kaisha IP Bridge 1 v. Broadcom Limited
`
`et al., USDC EDTEX 2:16-cv-00134-JRG-RSP (“the district-court litigation”).3 In
`
`response to Petitioner’s objections to Exhibit 2045, Patent Owner served as
`
`
`
`3 A joint motion to dismiss the district-court litigation was granted on July 5, 2017.
`
`Ex.2049.
`
`
`
`9
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`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
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`supplemental evidence an unredacted copy of the Report, together with a
`
`declaration from litigation counsel representing Godo Kaisha IP Bridge 1 in the
`
`district-court litigation, who, having first-hand personal knowledge, verified the
`
`authenticity of the Report.
`
`In Petitioner’s Opposition To Patent Owner’s Contingent Motion to Amend,
`
`Petitioner asserted that Patent Owner did not discuss Exhibits 1025-1031 which
`
`were identified in Exhibit 1037. Paper 20, pp.2-3. Patent Owner replied that
`
`Exhibits 1025-1031 were not material and, at most, cumulative to the prior art of
`
`record. Paper 25, pp.2-7. Exhibit 2045 shows that the defendants’ validity expert
`
`in the related litigation involving the ‘324 patent did not rely on any of Exhibits
`
`1025-1031 as a primary reference or in combination with any primary reference to
`
`allege obviousness, thereby further evidencing the immateriality of these exhibits.
`
`As Exhibits 1025-1031 appear in the preliminary contentions (Exhibit 1037),
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`whether Dr. Mack reviewed Exhibits 1025-1031 in preparing his invalidity report
`
`is of no consequence; the Exhibits were clearly not considered relevant by Dr.
`
`Mack or the defendants challenging the patentability of the ‘324 patent. Moreover,
`
`Petitioner will not be prejudiced if Exhibit 2045 is not excluded as it is proffered
`
`simply to show that Exhibits 1025-1031 were not relied on in the expert report,
`
`evidencing that they are not material compared to the other art of record. Indeed,
`
`Petitioner’s expert did not discuss any of Exhibits 1025-1031in his second
`
`
`
`10
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`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
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`declaration in support of Petitioner’s Reply and Petitioner’s opposition to the
`
`motion to amend. Ex.1038.
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`Moreover, there is no requirement that a patent owner seeking to amend its
`
`claims in an IPR must analyze immaterial and cumulative references, particularly
`
`where, as here, there are many different permutations. Moreover, “the law does
`
`not require that the Board address every conceivable combination of prior art
`
`discussed throughout an IPR proceeding, no matter how duplicative the other
`
`references are.” Shinn Fu Co. of Am., Inc. v. Tire Hanger Corp., No. 2016-2250, p.
`
`9 (Federal Circuit, July 3, 2017)(nonprecedential). Rather, the Board’s obligation
`
`is “to address the arguments that the parties present to it.” Id.
`
`In any event, Patent Owner timely served on Petitioner an unredacted copy
`
`of the Report, together with a declaration authenticating of the Report. Exhibit
`
`2045 should not be excluded because the redacted report is relevant to show the
`
`immateriality of Exhibits 1025-1031, and the Board can afford Exhibit 2045
`
`whatever weight it deems appropriate.
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`VI. Conclusion
`
`
`
`For the reasons discussed herein, the Board should deny Petitioner’s Motion
`
`To Exclude Evidence in its entirety.
`
`Dated: July 26, 2017
`
`Respectfully submitted by:
`
`/Michael J. Fink/
`
`
`
`
`
`11
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`
`
`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`
`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
`
`
`
`12
`
`{R50502 03187601.DOC}
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`
`
`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 OPPOSITION TO
`
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`was served by electronic mail on this 26th 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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