UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Taiwan Semiconductor Manufacturing Company, Ltd.
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`Petitioner
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`v.
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`Godo Kaisha IP Bridge 1
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`Patent Owner
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`Patent No. 6,197,696
`Filing Date: March 23, 1999
`Issue Date: March 6, 2001
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`Title: METHOD FOR FORMING INTERCONNECTION STRUCTURE
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`Inter Partes Review No. IPR2016-01378
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`PETITIONER’S REPLY UNDER 37 C.F.R. § 42.108(c)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Taiwan Semiconductor Manufacturing Company, Ltd.
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`Petitioner
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`v.
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`Godo Kaisha IP Bridge 1
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`Patent Owner
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`Patent No. 6,197,696
`Filing Date: March 23, 1999
`Issue Date: March 6, 2001
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`Title: METHOD FOR FORMING INTERCONNECTION STRUCTURE
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`Inter Partes Review No. IPR2016-01378
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`PETITIONER’S REPLY UNDER 37 C.F.R. § 42.108(c)
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`Table of Authorities
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`Cases
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`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375
`(Fed. Cir. 2015) ............................................................................................ 1, 2, 3
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`Goeddel v. Sugano, 617 F.3d 1350 (Fed. Cir. 2010) ................................................. 2
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`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016) ....................2, 3
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`Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316 (Fed. Cir. 2008) ........ 1, 2, 3
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`Statutes
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`35 U.S.C. § 102(e) ..................................................................................................... 1
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`35 U.S.C. § 112 ......................................................................................................1, 3
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`Other Authorities
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`Alarm.com Inc. v. Vivint, Inc., 2016IPR-00129, Paper 13 (May 3, 2016) ................ 3
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`Core Survival, Inc. v. S&S Precision, LLC, PGR2015-00022, Paper 8
`(Feb. 19, 2016) ............................................................................................. 1, 2, 3
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`MPEP §201.15 (7th ed. July 1998) ............................................................................ 3
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`Polaris Wireless, Inc. v. TruePosition, Inc., IPR2013-00323, Paper 9
`(Nov. 15, 2013) ..................................................................................................... 2
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`TSMC’s petition satisfied its initial burden of production by showing that
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`Grill, on its face, is prior art under §102(e). Even though the law did not require it,
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`TSMC referenced examples of evidence showing that the ’696 patent is not
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`entitled to the benefit of foreign priority and that Grill is entitled to the filing date
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`of its provisional. See Core Survival, Inc. v. S&S Precision, LLC PGR2015-00022,
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`Paper 8, at 8-9 (Feb. 19, 2016).
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`In its POPR, Patent Owner IPB did not offer the requisite §112 support for
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`all limitations of the claims to establish foreign priority for the ’696 patent. Instead
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`it argued that TSMC failed to prove the ’696 patent is not entitled to foreign
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`priority. Thus, IPB defies the well-established burden framework and erroneously
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`implies the ’696 patent is presumptively entitled to foreign priority.
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`Once Petitioner shows a reference is prior art, the burden then shifts to
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`Patent Owner to show the challenged claim benefits from a filing date before the
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`prior art. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379
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`(Fed. Cir. 2015); Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327
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`(Fed. Cir. 2008) [TLC]. This requires showing “not only the existence of the earlier
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`application, but why the written description in the earlier application supports the
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`claim.’” Drinkware, 800 F.3d at 1379 (quoting TLC, 545 F.3d at 1327). Where
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`there is a foreign priority claim, Patent Owner must identify §112 support in the
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`priority document for all limitations of the claims. See Goeddel v. Sugano, 617
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`1
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`F.3d 1350, 1353–54 (Fed. Cir. 2010). Only if Patent Owner makes this showing
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`does the burden then shift back to Petitioner to rebut Patent Owner’s arguments or
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`to show the prior art benefits from an earlier filing date. Drinkware, 800 F.3d at
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`1379–80; TLC, 545 F.3d at 1327–28. This burden-shifting framework is
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`“warranted because the patentee affirmatively seeks to establish a proposition not
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`relied on by the patent challenger and not a necessary predicate for the
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`unpatentability claim asserted—effectively an affirmative defense.” In re Magnum
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`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016).
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`IPB attempts to avoid its burden of properly establishing foreign priority for
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`the ’696 patent by attacking examples of why the ’696 patent is not entitled to
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`priority, which TSMC did not even need to provide. See Core Survival at 8-9. IPB
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`relies on Polaris Wireless, Inc. v. TruePosition, Inc., IPR2013-00323, Paper 9
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`(Nov. 15, 2013), hoping to meet its burden by simply criticizing these examples
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`TSMC identified as limitations lacking support. It cannot, according to the
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`Drinkware/TLC framework. And the Board has rejected other propositions IPB
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`seeks to derive from Polaris. See Core Survival at 8-10 & n.3 (rejecting the notion,
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`based on Polaris, that a document is not prior art if the Petitioner fails to show the
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`challenged patent is not entitled to priority). The Board did not find “any support in
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`[Polaris] for the proposition that a Petitioner has any initial burden to contest
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`entitlement to a provisional filing date,” and “the only showing Petitioner needed
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`2
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`to make is that ‘the art must have existed as of the date of invention, presumed to
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`be the filing date of the application until an earlier date is proved.’” Id. at 8-9.
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`IPB’s arguments amount to requiring TSMC to disprove foreign priority,
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`which would result in presumptive entitlement to foreign priority. But the Federal
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`Circuit has rejected as unsound the notion that a patent can be presumed to benefit
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`from an earlier filing date when the PTO did not examine the priority document.
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`Drinkware, 800 F.3d at 1380. Claims for foreign priority fall into that category.
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`MPEP §201.15 (7th ed.) (now §215). And, contrary to IPB’s suggestion, notice of
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`a priority claim on the patent does not require Petitioner to disprove foreign
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`priority, because TLC involved a priority claim (to a CIP, where earlier benefit is
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`not automatic) on the face of the patent. See 545 F.3d at 1321 & n.2, 1327–28.
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`TSMC’s petition was not required to show that Grill benefits from its
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`provisional filing date, and IPB’s reliance on Alarm.com Inc. v. Vivint, Inc. is
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`misplaced. The reference there did not predate the challenged patent, so
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`establishing priority for the reference was “a necessary predicate” to the invalidity
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`grounds. Magnum, 829 F.3d at 1376; see also IPR2016-00129, Paper 13, at 16
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`(May 3, 2016). Here, establishing an earlier priority for Grill is not a “necessary
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`predicate” because Grill is prior art, on its face, and remains so unless and until
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`IPB identifies adequate §112 support for all limitations of the challenged claims on
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`an element-by-element basis, as required.
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`3
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`Dated: November 23, 2016
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`Respectfully submitted,
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`By: /Darren M. Jiron/
`Darren M. Jiron, Lead Counsel
`Reg. No. 45,777
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`Counsel for Petitioner
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`CERTIFICATE OF SERVICE
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`This is to certify under 37 C.F.R. § 42.6(e) that, on this 23rd day of
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`November 2016, I caused counsel of record for the Patent Owner (as listed below)
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`to be electronically served a true and correct copy of the “Petitioner’s Reply Under
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`37 C.F.R. § 42.108(c).”
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`J. Steven Baughman
`steven.baughman@ropesgray.com
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`Andrew N. Thomases
`andrew.thomases@ropesgray.com
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`IPBridgeTSMCPTABService@ropesgray.com
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`Respectfully submitted,
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`By: /Darren M. Jiron/
`Darren M. Jiron, Lead Counsel
`Reg. No. 45,777
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`Counsel for Petitioner
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`Dated: November 23, 2016
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