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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.,
`and GLOBALFOUNDRIES U.S. INC.,
`Petitioners,
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`v.
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`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`
`
`Case IPR2016-013761
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`Patent 6,197,696 B1
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`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
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`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`UNDER 37 C.F.R. § 42.64(c)
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`1 GlobalFoundries U.S. Inc.’s motion for joinder in IPR2017-00921 was granted.
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`IPR2016-01376, IPR2017-0092l
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`Patent 6,197,696 B1
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`Petitioner TSMC moves to exclude Exhibits 2015, 2018, and 2019 under 37
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`C.F.R. § 42.64(c) as irrelevant and non-probative under Fed. R. Evid. 401, 402,
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`and 403. The Exhibits are:
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`Handbook of VLSI Microlithography, Second Edition, Principles,
`Technology, and Applications, edited by John N. Helbert, Noyes
`Publications, William Andrew Publishing, LLC, 2001 (excerpted).
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`(excerpted) (Smith Deposition Exhibit 9).
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`Microlithography: Science and Technology, 2nd ed., by Kazuaki
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`Suzuki and Bruce W. Smith, CRC Press, 2007 (Chapter 12)
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`(excerpted) (Smith Deposition Exhibit 3).
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`Microlithography: Science and Technology, 2nd ed., by Kazuaki
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`Suzuki and Bruce W. Smith, CRC Press, 2007 (Chapter 11)
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`On April 29, 2017, Petitioner objected to Exhibits 2015, 2018, and 2019 as
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`irrelevant to any material facts at issue in this proceeding, and because their
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`tendency to confuse the issues, mislead the Board, waste time, and needlessly
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`present cumulative evidence substantially outweighs any probative value Patent
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`Owner may assign them. Paper 20, at 1—2.
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`Exhibit 2015, which bears a copyright date of 2001, was published after the
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`date of invention, which is March 23, 1999. See, e.g., Paper 11, at 19—26. Exhibits
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`2018 and 2019 both bear copyright dates of 2007, which also post—date the alleged
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`invention. Patent Owner further provided excerpts from a 1991 edition of the
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`IPR2016-01376, IPR2017-00921
`Patent 6,197,696 B1
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`textbook from which Exhibit 2015 was taken (see generally EX20272) and
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`excerpts from a 1998 edition of the textbook from which Exhibits 2018 and 2019
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`were taken (see generally EX2017).
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`To the extent Patent Owner relies on Exhibits 2015, 2018, or 2019 for the
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`information they contained in the earlier editions (Exhibits 2017 and 2027), those
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`exhibits present “needlessly present[] cumulative evidence.” Fed. R. Evid. 403. To
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`the extent Patent Owner relies on Exhibits 2015, 2018, or 2019 for information
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`absent from the earlier editions, Patent Owner is citing “impermissible . . . later
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`knowledge about later art-related facts.” In re Hogan, 559 F.2d 595, 605 (CCPA
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`1977). Exhibits 2015, 2018, and 2019 are therefore inadmissible under Fed. R.
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`Evid. 401, 402, and 403, and Petitioner requests that the Board exclude them
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`Dated: August 15, 2017
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`Respectfully submitted,
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`
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`By: /Darren M. Jiron/
`Darren M. Jiron
`Reg. No. 45,777
`
`
`Lead Counsel for Petitioner
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`2 Patent Owner served Exhibit 2027 in response to Petitioner’s objections
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`filed on April 21, 2017 (see generally Paper 20), but EX2027 has not been filed.
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`IPR2016-01376, IPR2017-00921
`Patent No. 6,197,696
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that I caused to be served a
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`true and correct copy of the PETITIONER’S MOTION TO EXCLUDE
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`EVIDENCE UNDER 37 C.F.R. § 42.64(c) by electronic mail, this 15th day of
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`August, 2017, on counsel of record for the Patent Owner as follows:
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`Andrew N. Thomases
`andrew.thomases@ropesgray.com
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`J. Steven Baughman
`sbaughman@paulweiss.com
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`Jordan M. Rossen
`jordan.rossen@ropesgray.com
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`James L. Davis, Jr.
`james.l.davis@ropesgray.com
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`IPBridgeTSMCPTABService@ropesgray.com
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`Patent Owner has agreed to electronic service.
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`A true and correct copy of the PETITIONER’S MOTION TO EXCLUDE
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`EVIDENCE UNDER 37 C.F.R. § 42.64(c) was also served on August 15, 2017,
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`via email directed to counsel of record for Petitioner GlobalFoundries U.S. Inc. at
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`the following:
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`David Tennant
`dtennant@whitecase.com
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`Shamita Etienne-Cummings
`setienne@whitecase.com
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`Allen Wang
`allen.wang@whitecase.com
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`IPR2016-01376, IPR2017-00921
`Patent No. 6,197,696
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`Dated: August 15, 2017
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`wcptab@whitecase.com
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`WCGlobalFoundriesIPR1Team@whitecase.com
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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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