IPR2016-01264
`U.S. Patent No. 6,538,324
`
`
`
`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 REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`
`
`
`U.S. Patent No. 6,538,324
`
`
`
`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 REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`
`
`
`
`For the reasons in Petitioner’s Motion to Exclude and below, the Board
`
`IPR2016-01264
`U.S. Patent No. 6,538,324
`
`
`should exclude each of the following Patent Owner Exhibits.
`
`I. Exhibit 2002
`The attorney comments from Ding’s file history (Exhibit 2002) are irrelevant
`
`because they were not available to a person of ordinary skill in the art (POSITA) as
`
`of the ’324 patent’s effective filing date. Ding’s prior-art status under pre-AIA 35
`
`U.S.C. § 102(e) only extends to Ding’s disclosure and not its file history. See
`
`M.P.E.P. 2136.02(II). The cases Patent Owner cites address circumstances where
`
`references dated after a patent’s priority date can show a POSITA’s knowledge
`
`about general understanding of facts related to the state of the art, but they do not
`
`permit ascribing to a POSITA knowledge of attorney comments about a narrow
`
`concept in a prior-art patent that was kept secret in the Patent and Trademark
`
`Office. Since Ding’s prosecution history was not publicly accessible until well after
`
`the 1999 effective filing date of the ’324 patent (i.e., when the Ding patent issued
`
`in 2005), these statements would not have been available to a POSITA at the
`
`relevant time, so the Board should exclude Exhibit 2002. Fed. R. Evid. 401-403.
`
`II. Exhibits 2003 and 2004
`Patent Owner never demonstrates how online dictionaries from 2016
`
`(Exhibits 2003 and 2004) would indicate the knowledge of a POSITA in 1999.
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (a claim term is to be
`
`
`
`1
`
`
`
`construed at the time of the invention). The Board must construe claims in a
`
`IPR2016-01264
`U.S. Patent No. 6,538,324
`
`
`“temporal context” at the time of the invention. Brookhill-Wilk 1, LLC. v. Intuitive
`
`Surgical, Inc., 334 F.3d 1294, 1299 (Fed. Cir. 2003) (refusing to consider
`
`dictionary and treatise from “unrelated and non-contemporaneous [online]
`
`authorities…dated well after the [patent-in-suit]” in its de novo claim construction
`
`analysis). Google Inc. v. Intellectual Ventures II LLC, IPR2014-01031, Paper 41
`
`(Dec. 7, 2015) did not address “Intellectual Ventures’s temporal concern,” as Patent
`
`Owner asserts, but only whether the online dictionary was irrelevant or hearsay.
`
`Patent Owner submitted replacement definitions (Exhibits 2008 and 2009)
`
`from dictionaries contemporaneous with the ’324 patent, yet for some unknown
`
`reason refuses to withdraw Exhibits 2003 and 2004. These exhibits are
`
`cumulative, and the Board should exclude them. Fed. R. Evid. 401-403.
`
`III. Exhibits 2016, 2017, 2022-2027, 2034, and 2035
`The MultiLing translator affidavits in Exhibits 2017, 2023, 2025, 2027, and
`
`2035 fail to set forth “that all statements made of the declarant’s own knowledge
`
`are true and that all statements made on information and belief are believed to be
`
`true” as 37 C.F.R. § 1.68 required. Patent Owner does not disagree or offer any
`
`statements in these affidavits to satisfy this requirement. See Paper 36, at 5.
`
`The MultiLing affidavits also fail to provide any evidence the affiant, Mr.
`
`Degn (a sales and marketing professional) had personal knowledge or could testify
`
`
`
`2
`
`
`
`to the statements in the affidavits. Affidavits must be made on personal knowledge
`
`IPR2016-01264
`U.S. Patent No. 6,538,324
`
`
`and show the affiant is competent to testify to matters in those documents. See
`
`Townsend Eng’g Co. v. Hitec Co., 1986 WL 13708 (N.D. Ill. 1986), aff'd 829 F.2d
`
`1086 (Fed. Cir. 1987) (striking translations because the translator affidavit failed to
`
`set forth affiant’s qualifications, and its statement regarding the translations’
`
`accuracy was insufficient because the affidavit was not based on his personal
`
`knowledge and did not establish his qualifications). The MultiLing affidavits have
`
`no information about the translators, their qualifications, or how they prepared the
`
`translations. Nor do the MultiLing affidavits explain the verification of the
`
`translations, so the affidavits do not properly certify the corresponding translations.
`
`The Board should exclude the affidavits (Exhibits 2017, 2023, 2025, 2027, 2035)
`
`and their corresponding translations (Exhibits 2016, 2022, 2024, 2026, 2034).
`
`IV. Paragraph 83 (d-n, v, w) in Exhibit 2037
`Although Patent Owner avers Dr. Harris’s declaration (Ex. 2037) is based
`
`entirely on sufficient facts and data, Patent Owner neglected to address the portions
`
`Petitioner seeks to exclude, Paragraph 83 sub-parts d-n, v, and w. In those portions,
`
`Dr. Harris opined whether Exhibits 2014-2027, 2030-2035, 2039, and 2040
`
`invalidate the Substitute Claims, but his opinions lack any supporting analysis,
`
`especially in view of the fact the invalidity report (Exhibit 2047) Patent Owner
`
`filed with its opposition maps certain references to the claims.
`
`
`
`3
`
`
`
`IPR2016-01264
`U.S. Patent No. 6,538,324
`
`For example, Exhibit 2047 shows Patent Owner knew that defendants in that
`
`related lawsuit Patent Owner brought, asserted Nogami as anticipating claims 1, 3,
`
`5, 7 and 9 of the ’324 patent. Those defendants mapped Nogami’s top layer 16 to a
`
`“first film consist[ing] essentially of a mixture of crystalline or polycrystalline
`
`metal with nitrogen throughout.” Ex. 2047, 36, 40-42 (emphasis added). Substitute
`
`Claims 11-13 seek to add the “throughout” limitation Patent Owner knew Nogami
`
`disclosed, but Dr. Harris provided no facts or analysis in Paragraph 83, sub-part v
`
`of Exhibit 2037 to distinguish Nogami alone or in view of Zhang and Ding.
`
`Because Dr. Harris’s opinions on Exhibits 2014-2027, 2030-2035, 2039, and
`
`2040 are not based on substantial facts or data, the Board should exclude
`
`Paragraph 83, sub-parts d-n, v, and w in Exhibit 2037, which are the only
`
`paragraphs addressing these exhibits, under Fed. R. Evid. 702 and Rule 42.65(a).
`
`V. Exhibits 2045 (redacted) and 2047 (unredacted)
`Exhibit 2045, an invalidity expert report from a related district court
`
`litigation, is irrelevant because it has no bearing on Patent Owner’s duty to
`
`distinguish the Substitute Claims from all prior art known to the Patent Owner.
`
`Patent Owner contends the invalidity expert report shows “ Exhibits 1025-
`
`1031 were not relied on in the expert report, evidencing that they are not material,”
`
`but this is not the proper standard for determining materiality. For one, the claims
`
`addressed in that report are not the same as the proposed Substitute Claims. Patent
`
`
`
`4
`
`
`
`Owner also argues “whether Dr. Mack reviewed Exhibits 1025-1031… is of no
`
`IPR2016-01264
`U.S. Patent No. 6,538,324
`
`
`consequence” (Paper 36, at 10), but that is disingenuous. If Dr. Mack did not even
`
`review Exhibits 1025-1031, he could not have formed an opinion on the materiality
`
`of those references. If so, Exhibit 2045 (and its unredacted version, Exhibit 2047)1
`
`is irrelevant to the materiality of Exhibits 1025-1031. And, Shinn Fu Co. of Am.,
`
`Inc. v. Tire Hanger Corp., No. 2016-2250 (Fed. Cir. July 3, 2017) (non-
`
`precedential), which Patent Owner cites, is inapposite. It only addresses the
`
`Board’s duties to address arguments presented by the parties, not Patent Owner’s
`
`duty of candor to disclose material, known prior art with its Motion to Amend.
`
`The Board should exclude Exhibits 2045 and 2047 as irrelevant and
`
`prejudicial.
`
`
`
`Dated: August 2, 2017
`
`Respectfully submitted,
`
`By: / E. Robert Yoches /
`E. Robert Yoches, Lead Counsel
`Reg. No. 30,120
`
`
`1 If Patent Owner’s position is only prior art addressed in Dr. Mack’s report is
`
`material, then there are at least three other prior-art combinations based on Hogan,
`
`Chiang, or Min from his report that were not addressed in the Motion to Amend.
`
`Thus, Patent Owner has failed its duty of candor and failed to address all prior art
`
`known to it even under its standard of materiality.
`
`
`
`5
`
`
`
`IPR2016-01264
`U.S. Patent No. 6,538,324
`
`
`CERTIFICATE OF SERVICE
`
`Under 37 C.F.R. § 42.6(e), the undersigned certifies that the foregoing
`
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE was served on August
`
`2, 2017, via electronic mail directed to counsel of record for the Patent Owner at:
`
`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: August 2, 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
