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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`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 REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c)
`
`
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`
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`1 GlobalFoundries U.S. Inc.’s motion for joinder in IPR2017-00923 was granted.
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`
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`
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`IPR2016-01378, IPR2017-00923
`Patent 6,197,696 B1
`
`I.
`
`INTRODUCTION
`
`Petitioner filed a two-page motion to exclude excerpts from two books
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`published after the ’696 patent was filed (Exhibits 2015, 2018, and 2019), too late
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`to be relevant to the issues in this case. Patent Owner also provided earlier versions
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`of those excerpts (Exhibits 2017 and 2027), which it represented as having the
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`same disclosures as the later ones. Patent Owner can rely on these exhibits instead,
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`which should make this motion unimportant to Patent Owner.
`
`Patent Owner, however, submitted a twelve-page opposition that never
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`responded to the merits of Petitioner’s motion, and instead resembles a sur-reply
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`Patent Owner neither requested nor merited. Patent Owner also misused its
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`opposition to vilify Petitioner, misrepresent the contents and significance of the
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`exhibits in question, and repeat argument from its Patent Owner’s Response (Paper
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`19).
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`Because the arguments in Patent Owner’s opposition are non-responsive and
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`improper, the Board should strike Paper 37. And because Exhibits 2015, 2018, and
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`2019 post-date the challenged claims and are needlessly cumulative, the Board
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`should exclude them.
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`
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`IPR2016-01378, IPR2017-00923
`Patent 6,197,696 B1
`
`II. ARGUMENT
`
`A.
`
`Patent Owner’s Opposition Supports Petitioner’s Motion to
`Exclude
`
`Petitioner’s motion simply sought to exclude the later version of two books.
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`They are duplicative and needlessly cumulative under Fed. R. Evid. 403 if they are
`
`the same as earlier versions of the same books, and inadmissible as “impermissible
`
`. . . later knowledge about later art-related facts” if there are differences. In re
`
`Hogan, 559 F.2d 595, 605 (CCPA 1977).
`
`Patent Owner represents “the relevant information is unchanged across the
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`versions of Dr. Smith’s textbook dating back to 1998.” Paper 37, at 7 (referring to
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`Exhibits 2017–19). Patent Owner also represents that “a 1991 version of EX2015
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`. . . contains the same disclosure” as Exhibit 2015. Paper 37, at 8 (referring to
`
`Exhibit 2027). If so, Patent Owner can rely on the excerpts from earlier versions of
`
`these books, and the Board should grant Petitioner’s motion.
`
`B.
`
`The Board Should Strike Patent Owner’s Substantive
`Arguments as Improper
`
`Patent Owner improperly used the Opposition to make substantive
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`arguments that belonged in its Response. Motions to exclude “may not be used . . .
`
`to prove a particular fact.”2 Office Patent Trial Guide, 77 Fed. Reg. 48,756, 48,767
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`2 This rule is stronger in oppositions, which may only respond to the motion and
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`“must comply with the content requirements for motions.” 37 C.F.R. § 42.23(a).
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`2
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`IPR2016-01378, IPR2017-00923
`Patent 6,197,696 B1
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`(Aug. 14, 2012). Ignoring that admonition, Patent Owner filed a 12-page
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`opposition to Petitioner’s two-page evidentiary motion and addressed purely
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`substantive issues in the case. The section headings of the response lay bare Patent
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`Owner’s disregard of the PTAB procedures:
`
`A. Exhibits 2015 and 2018 and the proper construction of “using the
`[designated] layer as a mask”
`1. EX2018 belies Petitioner’s and its Expert’s assertions regarding
`the meaning of “using the [designated layer] as a mask”
`2. EX2015 further demonstrates that Patent Owner’s construction
`is correct
`B. Exhibit 2019 and Grill’s warning against loss of critical dimension
`control caused by photoresist profiles having widely varied
`thicknesses
`
`The Board should not condone Patent Owner’s Trojan-horse tactics for filing a sur-
`
`reply it never requested, especially when Petitioner has only five pages to respond
`
`to the new issues raised.
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`C.
`
`Patent Owner’s Substantive Arguments Misrepresent the
`Evidence
`
`Exhibit 2018 is not relevant for any of the reasons Patent Owner offered.
`
`Patent Owner again suggests Dr. Smith’s book teaches using an intermediate layer
`
`as a mask for etching (see Paper 37, at 5–6), but cites nothing in the book to
`
`substantiate this allegation. No version of Dr. Smith’s textbook shows a buried
`
`layer playing any role in etching.
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`3
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`IPR2016-01378, IPR2017-00923
`Patent 6,197,696 B1
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`Patent Owner also continues to misrepresent
`
`that the figure to the right (based on Exhibit 2018)
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`is a physical structure, despite contrary testimony
`
`from the author, corroborated by sources cited in
`
`the author’s work, patents, and other textbooks.
`
`See, e.g., Paper 26, at 6–8 & n.2 (and references
`
`therein). Dr. Smith explained:
`
`The reason I’ve drawn the picture the way I did, as I’ve said before, to
`show that pattern transfer from top to bottom can retain that same
`sidewall angle if it’s done in a way that I’ve described. It’s not meant
`to depict what the final result would be, and you can tell that based on
`the words I’ve used. I’ve not labeled these in terms of what they are
`but the process that’s used to transfer those layers, exposed developed
`plasma RIE and then oxygen plasma RIE.
`
`EX2010 at 62:15–63:2; see also EX2010 at 61:14–19; Paper 26, at 6–8 & n.2 (and
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`references therein). Even if this figure depicted an actual structure, neither Dr,
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`Smith’s textbook nor any other reference describing a multi-layer resist process
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`suggests a buried layer is used as an etch mask. See id.
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`Patent Owner then falsely suggests “the total patterning layer” in Exhibit
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`2015 shows a single patterning mask for etching (Paper 37, at 8). Like Exhibit
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`2018, Exhibit 2015 merely describes a tri-layer process, and never suggests an
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`4
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`IPR2016-01378, IPR2017-00923
`Patent 6,197,696 B1
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`intermediate layer acts as a mask. Each layer used in such “[m]ultilayer processing
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`techniques” (EX2015 at 7 (emphasis added)) plays a different role during each
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`processing step, and an intermediate layer is never a mask unless the layer above is
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`gone. See, e.g., Paper 26, at 6–8 & n.2 (and references therein).
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`Patent Owner also incorrectly suggests Exhibit 2019 is relevant “because it
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`demonstrates that a POSITA would not have combined the Grill and Aoyama
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`references.” Paper 37, at 10. Instead, Exhibit 2019 contradicts Patent Owner’s
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`argument that “exposure variations . . . could lead to loss of critical dimension
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`control” in the Grill-Aoyama combination, because it says a “relatively large range
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`of exposure variation can be tolerated” when focusing the exposing light properly.
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`EX2019 at 33; see also id. at 35 (Figs. 11.13(a), 11.13(b)) (illustrating the same).
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`III. CONCLUSION
`The Board should exclude Exhibits 2015, 2018, and 2019 for the reasons in
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`Petitioner’s motion to exclude (Paper 30), which Patent Owner never disputed. The
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`Board should further strike Patent Owner’s response as an improper sur-reply.
`
`
`Dated: August 30, 2017
`
`
`Respectfully submitted,
`
`
`By: /Darren M. Jiron/
`
`
`Darren M. Jiron, Reg. No. 45,777
`
`Lead Counsel for Petitioner
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`5
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`IPR2016-01378, IPR2017-00923
`Patent 6,197,696 B1
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`
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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 served a true and
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`correct copy of the PETITIONER’S REPLY IN SUPPORT OF ITS MOTION
`
`TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c) by electronic mail,
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`on this 30th day of August, 2017, on counsel of record for the Patent Owner as
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`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
`
`IPBridgeTSMCPTABService@ropesgray.com
`
`
`
`Patent Owner has agreed to electronic service.
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` A
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` true and correct copy of the PETITIONER’S REPLY IN SUPPORT
`
`OF ITS MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c)
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`was also served by electronic mail, on this 30th day of August, 2017, on counsel
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`of record for Petitioner GlobalFoundries U.S. Inc. at the following:
`
`
`
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`David Tennant
`dtennant@whitecase.com
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`IPR2016-01378, IPR2017-00923
`Patent 6,197,696 B1
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`Dated: August 30, 2017
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`wcptab@whitecase.com
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`WCGlobalFoundriesIPR1Team@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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`
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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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