Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 7
`Entered: November 17, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`
`Case IPR2016-01376
`Case IPR2016-01377
`Case IPR2016-01378
`Case IPR2016-013791
`Patent 6,197,696 B1
`
`
`
`
`
`
`
`
`
`Before, JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order addresses issues common to all cases; therefore, we issue a
`single Order to be entered in each case. The parties are authorized to use
`this style heading when filing the same paper in multiple proceedings,
`provided that such heading includes a footnote attesting that “the word-for-
`word identical paper is filed in each proceeding identified in the heading.”
`
`
`Tel: 571-272-7822
`
`Paper 7
`Entered: November 17, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`
`Case IPR2016-01376
`Case IPR2016-01377
`Case IPR2016-01378
`Case IPR2016-013791
`Patent 6,197,696 B1
`
`
`
`
`
`
`
`
`
`Before, JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order addresses issues common to all cases; therefore, we issue a
`single Order to be entered in each case. The parties are authorized to use
`this style heading when filing the same paper in multiple proceedings,
`provided that such heading includes a footnote attesting that “the word-for-
`word identical paper is filed in each proceeding identified in the heading.”
`
`
`
`IPR2016-01376, IPR2016-01377, IPR2016-01378, IPR2016-01379
`Patent 6,197,696 B1
`
`
`On November 16, 2016, a conference call was held among counsel for
`both parties and Judges Arbes, Fitzpatrick, and Chagnon. Particular issues
`discussed during the call are summarized below.2
`
`Additional Briefing on Burdens of Production at Institution:
`In its Preliminary Response (Paper 6,3 “Prelim. Resp.”), Patent
`Owner, Godo Kaisha IP Bridge 1, argues that Petitioner, Taiwan
`Semiconductor Manufacturing Company, Ltd., has failed to show that Grill4
`is prior art as to the patent challenged in these proceedings—namely,
`U.S. Patent No. 6,197,696 B1 (“the ’696 patent”). See Prelim. Resp. 9–38.
`During the conference call, Petitioner argued that the arguments
`presented in Patent Owner’s Preliminary Response amount to an improper
`burden shifting. Patent Owner disagreed. In particular, the parties’
`disagreement centers on whether Petitioner must show, in its Petition, that
`the ’696 patent is not entitled to its claimed foreign priority date, or whether
`the burden is on Patent Owner first to show that the ’696 patent is entitled to
`its claimed foreign priority date. The parties also disagreed regarding
`whether the Petition must address whether the asserted prior art (i.e., Grill) is
`entitled to the filing date of its provisional application.
`Petitioner requested authorization to file a reply to the Preliminary
`Response, limited to the legal issue of the parties’ respective burdens of
`
`2 A court reporter was present for the conference call. This Order
`summarizes statements made during the conference call. A complete record
`also may be found in the court reporter’s transcript, which is to be filed by
`Petitioner as an exhibit.
`3 The relevant papers have been filed in each of the four cases. Citations are
`to the papers filed in IPR2016-01376 for convenience.
`4 U.S. Patent No. 6,140,226 (Ex. 1005).
`
`2
`
`
`
`IPR2016-01376, IPR2016-01377, IPR2016-01378, IPR2016-01379
`Patent 6,197,696 B1
`
`production, where disputes arise as to whether a patent or cited prior art is
`entitled to the benefit of an earlier priority date. Patent Owner opposed
`Petitioner’s request as prejudicial and untimely, but requested authorization
`to file a sur-reply if a reply is authorized.
`Petitioner is authorized to file a reply, limited to the legal issue of the
`parties’ respective burdens, as discussed above. The reply is limited to
`three (3) pages and is to be filed by November 23, 2016. Patent Owner also
`is authorized to file a sur-reply, similarly limited in subject matter. The
`sur-reply also is limited to three (3) pages and is to be filed by December 1,
`2016. Neither brief may present arguments regarding whether a burden has
`been met; they may address only which party bears what burden(s). Neither
`party is authorized to file any new evidence.
`
`Corrected Declarations:
`Petitioner also requested authorization to file, in each proceeding, a
`corrected declaration to correct an alleged typographical error in
`Exhibit 1002. Exhibit 1002 is a declaration of Bruce W. Smith, Ph.D.
`Petitioner argued that there is an obvious typographical error in the claim
`chart on page B-10 of “Appendix B” to Dr. Smith’s declaration. In
`particular, Petitioner requested authorization to change the sentence that
`reads “A person of ordinary skill in the art would have understood that
`etching layer 12 under such circumstances concurrently etches layer 58
`because the two layers have similar etch properties,” to instead read
`“A person of ordinary skill in the art would have understood that etching
`layer 12 under such circumstances concurrently etches layer 62 because the
`two layers have similar etch properties.” (emphases added).
`
`3
`
`
`
`IPR2016-01376, IPR2016-01377, IPR2016-01378, IPR2016-01379
`Patent 6,197,696 B1
`
`
`Patent Owner opposed Petitioner’s request, arguing that certain
`arguments set forth in its Preliminary Response (e.g., Prelim. Resp. 28–30)
`were premised on the as-filed declaration, such that if Petitioner is permitted
`to file a corrected declaration, Patent Owner would have no opportunity to
`respond. Patent Owner argued that Petitioner’s proposed change was not, in
`fact, a typographical error, but would amount to a substantive change to
`Dr. Smith’s declaration.
`Patent Owner also argued that “Appendix B” contains argument that
`was improperly incorporated by reference into the Petition, and that it is not
`cited to support any argument made in the Petition itself. Petitioner
`indicated that “Appendix B” was submitted as a demonstration that evidence
`does exist to show Grill is entitled to the filing date of its provisional
`application.
`Based on the particular facts and circumstances in these proceedings,
`Petitioner is not authorized to file corrected declarations.
`
`Accordingly, it is:
`ORDERED that Petitioner is authorized to file in each proceeding a
`reply to the Preliminary Response, limited to the legal issue of the parties’
`respective burdens, as discussed herein, limited to three (3) pages, by
`November 23, 2016;
`FURTHER ORDERED that Patent Owner is authorized to file in each
`proceeding a sur-reply, limited to three (3) pages, by December 1, 2016; and
`FURTHER ORDERED that no other papers or exhibits are authorized
`to be filed, at this time.
`
`4
`
`
`
`IPR2016-01376, IPR2016-01377, IPR2016-01378, IPR2016-01379
`Patent 6,197,696 B1
`
`PETITIONER:
`
`Darren M. Jiron
`E. Robert Yoches
`J.P. Long
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`darren.jiron@finnegan.com
`bob.yoches@finnegan.com
`j.preston.long@finnegan.com
`
`PATENT OWNER:
`
`J. Steven Baughman
`Andrew N. Thomases
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`andrew.thomases@ropesgray.com
`
`
`
`5
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