IPR2016-01264
`U.S. Patent No. 6,538,324
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`——————————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`——————————
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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 OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
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`U.S. Patent No. 6,538,324
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`——————————
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`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
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`——————————
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
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`IPR2016-01264
`U.S. Patent No. 6,538,324
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`TABLE OF CONTENTS
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`I.
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`II.
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`INTRODUCTION .......................................................................................... 1
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`ARGUMENT ................................................................................................. 1
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`A.
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`B.
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`C.
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`D.
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`Patent Owner Was Served with Exhibit 1037 in a Related Litigation
`and Cannot Deny Exhibit 1037 Is Authentic. ...................................... 1
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`Exhibit 1037 Is Admissible Under Fed. R. Evid. 901(b)(4) Because
`Its Authenticity Is Apparent on Its Face. ............................................. 2
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`Additional Evidence Proves the Authenticity of Exhibit 1037 ........... 4
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`The Board Should Disregard Patent Owner’s Hearsay Objection
`Because TSMC Did Not Offer Exhibit 1037 to Prove the Truth of
`Any Statements in that Exhibit. ........................................................... 6
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`III. CONCLUSION .............................................................................................. 7
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`i
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`IPR2016-01264
`U.S. Patent No. 6,538,324
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`TABLE OF AUTHORITIES
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`Cases
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`Link v. Mercedes-Benz of N. Am., Inc., 788 F.2d 918, 927 (3rd Cir. 1986) ............... 3
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`McQueeney v. Wilmington Trust Co., 779 F.2d 916, 927 (3d Cir. 1985) ................... 2
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`United States v. Dhinsa, 243 F.3d 635, 658 (2d Cir. 2001) ....................................... 2
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`United States v. Figueroa, 818 F.2d 1020, 1026-1027 (1st Cir. 1987) ...................... 6
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`Rules
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`Fed. R. Evid. 1004(c) ................................................................................................. 2
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`Fed. R. Evid. 801(c)(2) .............................................................................................. 6
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`Fed. R. Evid. 901(a) ................................................................................................... 2
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`Fed. R. Evid. 901(b)(4) ................................................................................. 2, 3, 5, 6
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`Patent Rule 3-3 Invalidity Contentions ..................................................................3, 4
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`ii
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`I.
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`INTRODUCTION
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`IPR2016-01264
`U.S. Patent No. 6,538,324
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`Patent Owner denies the authenticity of a copy of the invalidity contentions
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`it received in litigation, Exhibit 1037, even though Patent Owner refused to explain
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`why this exhibit is different from the one it received. See Ex. 1040. Patent Owner
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`did not even submit its own copy of the invalidity contentions to identify any
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`differences. Exhibit 1037 is authentic on its face, and the other evidence TSMC
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`submitted confirms its authenticity.
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`The Board should also reject Patent Owner’s hearsay objection because
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`TSMC did not submit Exhibit 1037 to prove the truth of the contents of the
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`document, but rather to show Patent Owner was aware of certain information it
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`failed to bring to the Board’s attention when filing its Contingent Motion to Amend
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`the Claims. See Paper 20.
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`II. ARGUMENT
`A.
`Patent Owner Was Served with Exhibit 1037 in a Related
`Litigation and Cannot Deny Exhibit 1037 Is Authentic.
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`Exhibit 1037 is a document Patent Owner was served with during a related
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`litigation it brought in the Eastern District of Texas. See Ex. 1039A. Patent Owner
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`can determine whether the document is the same as the copy it received rather than
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`burden the Board with this unnecessary exercise. On June 2, 2017, TSMC asked
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`Patent Owner to do so or withdraw its objection for lack of authenticity. Ex. 1040.
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`Patent Owner refused, but never identified any reason to justify its authenticity
`1
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`objection to Exhibit 1037. Id. Its motion to exclude still does not justify its
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`IPR2016-01264
`U.S. Patent No. 6,538,324
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`objection to authenticity
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`TSMC asks the Board to presume Exhibit 1037 is authentic unless Patent
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`Owner can identify a specific reason why it is not (which it cannot do). Cf. Fed. R.
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`Evid. 1004(c).
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`B.
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`Exhibit 1037 Is Admissible Under Fed. R. Evid. 901(b)(4) Because
`Its Authenticity Is Apparent on Its Face.
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`Fed. R. Evid. 901(a) requires parties to provide “evidence sufficient to
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`support a finding that the item is what the proponent claims,” a low threshold.
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`McQueeney v. Wilmington Trust Co., 779 F.2d 916, 927 (3d Cir. 1985) (“The
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`burden of proof for authentication is slight”). “If in the court’s judgment it seems
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`reasonably probable that the evidence is what it purports to be, the command of
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`Rule 901(a) is satisfied.” United States v. Dhinsa, 243 F.3d 635, 658 (2d Cir. 2001)
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`(internal quotation marks omitted); see Fed. R. Evid. 901(a).
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`Under Fed. R. Evid. 901(b)(4), the requirements for proving authenticity are
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`met if the “appearance, contents, substance, internal patterns, or other distinctive
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`characteristics of the item, taken together with all the circumstances,” indicate the
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`document is what it purports to be. The evidence may come from the documents
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`themselves, including the “official appearance of the documents.” Link v.
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`2
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`Mercedes-Benz of N. Am., Inc., 788 F.2d 918, 927 (3d Cir. 1986) (internal
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`IPR2016-01264
`U.S. Patent No. 6,538,324
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`quotation omitted); see also Fed. R. Evid. 901(b)(4).
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`Exhibit 1037 is a copy of invalidity contentions served on Patent Owner in a
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`district-court litigation involving the ’324 patent. On the first page of Exhibit 1037,
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`the caption provides the case number, information about the district court, and the
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`parties involved, including an identification of Patent Owner Godo Kaisha IP
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`Bridge 1 as the plaintiff. Ex. 1037, 1.
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`The caption also identifies the party that served the document on Patent
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`Owner and a title “PATENT RULE 3-3 INVALIDITY CONTENTIONS” clearly
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`identifying the character of the document. Id. The exhibit was signed by counsel
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`for defendants in the district-court litigation (id., 57-58), and includes a Certificate
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`of Service certifying that a true and correct copy of the document was served on
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`Patent Owner’s counsel on June 20, 2016. Id., 59. Consistent with Patent Rule 3-3
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`Invalidity Contentions, Exhibit 1037 identifies relevant prior art (id., 5-23) and
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`specific grounds of invalidity (id., 23-50), and contains invalidity claim charts
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`identifying claim elements in prior-art references (id., 60-229). Taken as a whole,
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`the appearance, contents, substance, and other distinctive characteristics of Exhibit
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`1037 by itself meets the low burden of establishing the authenticity of this exhibit
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`under Fed. R. Evid. 901(b)(4). The exhibit’s appearance supports the document’s
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`authenticity.
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`3
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`C. Additional Evidence Proves the Authenticity of Exhibit 1037
`Exhibit 1039 is a declaration from Mr. Thomas E. Gorman, Esq. stating
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`IPR2016-01264
`U.S. Patent No. 6,538,324
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`defendants’ counsel in the related litigation “provided me with a copy of their as-
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`served Invalidity Contentions, which TSMC filed as Exhibit 1037 in both inter
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`partes review proceedings.” Ex. 1039, ¶ 3. Mr. Gorman states, “TSMC’s Exhibit
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`1037 is a true and correct copy of the Defendants’ Patent Rule 3-3 Invalidity
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`Contentions and their attached Appendices B-1 to B-15, as received from
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`defendants’ counsel in the above-identified litigation.” Id., ¶ 4.
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`Patent Owner criticizes Mr. Gorman as not representing a party in the case,
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`but he represented TSMC, who was not a party to the litigation and was not served
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`with the document. Mr. Gorman can, nevertheless, testify he received the
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`document from a party to the case, attesting to its authenticity.
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`Exhibit 1039A to Mr. Gorman’s declaration is a printout of the PACER
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`docket from the related district-court litigation, downloaded May 31, 2017, which
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`includes a case caption identifying the case number, plaintiff, and defendants in the
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`case caption on the first page of Exhibit 1037. Ex. 1039A, 1. Exhibit 1039A also
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`identifies Patent Owner’s counsel as Gillam & Smith LLP and Ropes & Gray, the
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`counsel in the Certificate of Service in Exhibit 1037.
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`Exhibit 1039B is a copy of the local patent rules in the Eastern District of
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`Texas. Patent Rule 3-3 requires a party opposing a claim of patent infringement
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`4
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`serve “Invalidity Contentions” containing the “identity of each item of prior art,”
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`IPR2016-01264
`U.S. Patent No. 6,538,324
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`“[w]hether each item of prior art anticipates each asserted claim or renders it
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`obvious,” and “[a] chart identifying where specifically in each alleged item of prior
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`art each element of each asserted claim is found.” Ex. 1039B, 7-8. Consistent with
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`this rule, Exhibit 1037 contains the identity of prior-art references (Ex. 1037, 5-
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`23), grounds of invalidity (id., 23-50), and charts identifying where the prior-art
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`references disclose each element of the ’324 patent claims (id., 60-229). The title
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`of Exhibit 1037 also directly references this Patent Rule 3-3.
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`Exhibit 1039C is a copy of the Docket Control Order in the related district-
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`court litigation showing the proposed date for compliance with Patent Rule 3-3 as
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`June 20, 2016. Ex. 1039C, at 4. This date is consistent with the date of service
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`identified in the Notice of Compliance (Ex. 1039D), June 20, 2016, i.e., the same
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`date identified in the Certificate of Service in Exhibit 1037. Ex. 1039D, 1. These
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`supplemental exhibits further evidence the authenticity of Exhibit 1037 in
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`compliance with Fed. R. Evid. 901(b)(4).
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`Patent Owner ignores the distinctive characteristics of the invalidity
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`contentions and the circumstances surrounding this exhibit that demonstrate its
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`authenticity. Instead, Patent Owner offers some type of “fairness” justification,
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`alleging “Petitioner raised substantially the same objection against Patent Owner’s
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`Exhibits 1045 and 1046.” Mot. at 3. The Board should disregard this argument that
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`5
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`no statute or case recognizes. It is ill-taken as well because TSMC, unlike Patent
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`IPR2016-01264
`U.S. Patent No. 6,538,324
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`Owner, could not confirm the authenticity of Exhibits 1045 and 1046 since TSMC
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`was not party to the litigation. Moreover, TSMC did not move to exclude Patent
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`Owner’s Exhibits 1045 and 1046 on the basis of authenticity.
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`Exhibit 1037, in consideration of Exhibits 1039 and 1039A-F, meets the
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`authentication requirements of Fed. R. Evid. 901(b)(4).
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`D. The Board Should Disregard Patent Owner’s Hearsay Objection
`Because TSMC Did Not Offer Exhibit 1037 to Prove the Truth of
`Any Statements in that Exhibit.
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`Hearsay is an out-of-court statement “offer[ed] in evidence to prove the truth
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`of the matter asserted in the statement.” Fed. R. Evid. 801(c)(2). Statements
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`offered to show knowledge are not hearsay. See, e.g., United States v. Figueroa,
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`818 F.2d 1020, 1026-1027 (1st Cir. 1987) (statement offered to show knowledge of
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`a party, rather than accuracy of the statement, is not hearsay).
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`TSMC does not rely on Exhibit 1037 to prove the truth of any matter
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`asserted in the exhibit. Instead, TSMC offers Exhibit 1037 to show Patent Owner
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`knew of certain prior art and the element-by-element mappings of that prior art to
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`claims in the ’324 patent. The existence of these invalidity claim charts in Exhibit
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`1037 establishes Patent Owner’s state of mind regarding the materiality of these
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`prior-art references. Exhibit 1037 is properly admissible as a non-hearsay
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`document.
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`6
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`III. CONCLUSION
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`IPR2016-01264
`U.S. Patent No. 6,538,324
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`TSMC asks the Board to deny Patent Owner’s Motion to Exclude because
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`Exhibit 1037, which Patent Owner was served a copy in a related litigation, is
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`unquestionably authentic, and it is not subject to a hearsay objection.
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`Dated: July 26, 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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`7
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`IPR2016-01264
`U.S. Patent No. 6,538,324
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`CERTIFICATE OF SERVICE
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`Under 37 C.F.R. § 42.6(e), the undersigned certifies that the foregoing
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
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`EXCLUDE EVIDENCE was served on July 26, 2017, via electronic mail directed
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`to counsel of record for the Patent Owner at:
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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 26, 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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