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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.,
`and GLOBALFOUNDRIES U.S. INC.,
`Petitioners,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`
`
`Case IPR2016-013781
`
`Patent 6,197,696 B1
`
`
`
`
`
`
`
`
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`
`PETITIONER’S REQUEST FOR ORAL ARGUMENT
`
`
`
`1 GlobalFoundries U.S. Inc.’s motion for joinder in IPR2017-00923 was granted.
`
`
`
`
`
`
`IPR2016-01378, IPR2017-00923
`Patent 6,197,696 B1
`
`
`
`Pursuant to 37 C.F.R. § 42.70(a) and in accordance with the Board’s
`
`Scheduling Order dated January 18, 2017 (Paper 12), Petitioner Taiwan
`
`Semiconductor Manufacturing Company Limited (“TSMC”) respectfully submits
`
`this Request for Oral Argument. The Board has currently scheduled the oral
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`argument in IPR2016-01376, IPR2016-01377, IPR2016-01378, and IPR2016-
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`01379 for September 12, 2017. Paper 12 at 6.
`
`TSMC specifies the following issues to be argued during oral argument:
`
` Whether claims 10–15 of U.S. Patent No. 6,197,696 are entitled to the
`
`benefit of priority of Japanese Patent Application No. H10-079371;
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` Whether the effective prior-art date of Grill under pre-AIA 35 U.S.C.
`
`§ 102(e) is the filing date of its provisional parent application, U.S.
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`Application Ser. No. 60/071,628;
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` Whether claims 10–15 of U.S. Patent No. 6,197,696 are unpatentable
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`under pre-AIA 35 U.S.C. § 103 as obvious over Grill in view of
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`Aoyama;
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` Whether claims 10 and 12 of U.S. Patent No. 6,197,696 are
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`unpatentable under pre-AIA 35 U.S.C. § 103 as obvious over Grill in
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`view of Aoyama and Wetzel;
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` Any issues identified in Patent Owner’s Request for Oral Hearing;
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` Any issues raised in either party’s Motions to Exclude; and
`
`
`
`
`
`IPR2016-01378, IPR2017-00923
`Patent 6,197,696 B1
`
`
` Any other issues the Board deems necessary for issuing a final written
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`decision.
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`Petitioner requests 60 minutes of argument time for the proposed hearing of
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`consolidated IPR2016-01376, IPR2016-01377, IPR2016-01378, and IPR2016-
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`01379. To the extent the Board schedules the hearing to last longer than 120
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`minutes, Petitioner requests half the length of the hearing be allocated to Petitioner
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`to address these issues.
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`Finally, Petitioner requests that ten spaces be reserved at the oral hearing to
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`accommodate its counsel and corporate representatives. Petitioner also requests
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`that two attorneys at Petitioner’s counsel’s table be allowed to use computers at the
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`hearing (in addition to the counsel making the argument using his or her computer
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`to show the demonstratives), to avoid the need for the parties to bring entire paper
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`copies of the record into the hearing room and to facilitate efficient answering of
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`panel questions.
`
`
`
`Dated: August 15, 2017
`
`Respectfully submitted,
`
`
`
`By: /Darren M. Jiron/
`Darren M. Jiron
`Reg. No. 45,777
`
`Lead Counsel for Petitioner
`
` 2
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`
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`
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`IPR2016-01378, IPR2017-00923
`Patent 6,197,696 B1
`
`
`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 REQUEST FOR ORAL
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`ARGUMENT by electronic mail, this 15th day of August, 2017, on counsel of
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`record for the Patent Owner as follows:
`
`Andrew N. Thomases
`andrew.thomases@ropesgray.com
`
`J. Steven Baughman
`sbaughman@paulweiss.com
`
`Jordan M. Rossen
`jordan.rossen@ropesgray.com
`
`James L. Davis, Jr.
`james.l.davis@ropesgray.com
`
`
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`
`
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`
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`
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`IPBridgeTSMCPTABService@ropesgray.com
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`Patent Owner has agreed to electronic service.
`
`
`A true and correct copy of the PETITIONER’S REQUEST FOR ORAL
`
`ARGUMENT was also served on August 15, 2017, via email directed to counsel
`
`of record for Petitioner GlobalFoundries U.S. Inc. at the following:
`
`
`
`
`
`
`
`
`David Tennant
`dtennant@whitecase.com
`
`Shamita Etienne-Cummings
`setienne@whitecase.com
`
`
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`
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`
`
`
`
`Allen Wang
`allen.wang@whitecase.com
`
`
`
`
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`IPR2016-01378, IPR2017-00923
`Patent 6,197,696 B1
`
`
`
`
`
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`
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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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