IPR2016-01378
`U.S. Patent No. 6,197,696
`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 No. IPR2016-013781
`Patent Number 6,197,696
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`PATENT OWNER’S MOTION FOR
`OBSERVATIONS ON CROSS EXAMINATION
`
`
`
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`1 GlobalFoundries U.S. Inc., who filed Petition IPR2017-00923, has been joined as
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`a petitioner in this proceeding.
`
`
`
`
`U.S. Patent No. 6,197,696
`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 No. IPR2016-013781
`Patent Number 6,197,696
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`PATENT OWNER’S MOTION FOR
`OBSERVATIONS ON CROSS EXAMINATION
`
`
`
`
`1 GlobalFoundries U.S. Inc., who filed Petition IPR2017-00923, has been joined as
`
`a petitioner in this proceeding.
`
`
`
`
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`Patent Owner Godo Kaisha IP Bridge 1 (“Patent Owner”) respectfully
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`moves for observation of the following testimony from the August 2, 2017 cross-
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`examination by deposition of Dr. Bruce Smith, expert witness for Petitioner
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`Taiwan Semiconductor Manufacturing Company, Ltd. (“Petitioner” or “TSMC”),
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`submitted herewith as EX2040.
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`1.
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`In EX2040, at 12:14-15:22, Dr. Smith testified about his “interpretation”
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`of the sentence “In this case the second resist pattern 359 is removed during the
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`step of etching the organic film 354,” in ¶93 of EX1014 (Petitioner’s Certified
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`Translation of the ’696 Foreign Priority Document). Dr. Smith testified that he
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`interprets this sentence to mean “the second resist pattern [359] is at least partially
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`removed during this step of etching the organic film 354.” EX2040, 15:16-22.2
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`This testimony is relevant to Petitioner’s assertions and Dr. Smith’s allegations at
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`EX1050 ¶¶34-36, that Patent Owner “mistakenly suggest that the Japanese ’371
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`application supports step i) of claim 13” because Dr. Smith asserts that “there is no
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`reason to think second resist pattern 359 is removed before the complete patterning
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`of layer 354.” EX1050 ¶35; see also Paper 26 (“Reply”) 13. This testimony is
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`relevant because Petitioner’s and Dr. Smith’s analysis attempts improperly to
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`2 Emphasis added throughout unless otherwise indicated.
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`1
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`rewrite the Japanese Application’s express disclosures to avoid the ’696 claims
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`being entitled to their earlier priority date.
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`2.
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`In EX2040, at 16:1-17:20, Dr. Smith testified about Figures 16(b) to
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`16(c) and 19:41-45 of the ’696 patent (EX1001). Dr. Smith was asked, “Is film
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`354A being used as a mask in etching film 353?” and answered that “It says that
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`in the specification, but 354A is not – would not be part of the mask that would
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`be etching 353.” EX2040, 18:3-7. This testimony is relevant because it is
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`inconsistent with and contradicts, in addition to the ’696 patent specification itself,
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`(1) Petitioner’s argument that layer 354A is “exposed to act as a mask” (Reply 13-
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`14), and (2) the Board’s construction of “using [the designated layer] as a mask,”
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`which “does not preclude, for example, a layer positioned between an overlying
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`layer and the layer being etched from acting as a mask … in an instance where the
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`overlying layer also is removed during the etching, and thus, the between layer acts
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`to shield the layer being etched during etching” (Paper 11 at 18 n.7). This
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`testimony is also relevant to Petitioner’s assertion (Reply 8-9) and Dr. Smith’s
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`opinions in EX1050 ¶¶20-28 regarding alleged “inconsistencies in the ‘696
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`patent.” This testimony is relevant because it illustrates that Dr. Smith’s analysis of
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`Figures 16(c) and 16(d) of the ’696 patent ignores and contradicts the express
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`language in the specification, which states, “[n]ext, as shown in FIG. 16(c), the
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`first silicon dioxide film 353 is dry-etched using the patterned second silicon
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`dioxide film 355A and the patterned organic film 354A as a mask ….” EX1001,
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`19:41-45. This testimony is also relevant because it is apparent that Dr. Smith did
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`not recognize the inconsistencies in his testimony until Petitioner directed his
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`attention to them through a series of leading questions, and Dr. Smith never
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`addressed or explained those inconsistencies with his earlier testimony or clarified
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`which interpretation he applied. EX2040, 59:16-60:3.
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`3.
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`In EX2040, at 18:13-20:20, Dr. Smith testified about processing layers
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`504A, 505A and 503 in Figures 23(b) and 23(c) and 24:7-10 of the ’696 patent
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`(EX1001). Dr. Smith testified that “[t]he organic -- first organic film 503 is therefore
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`etched using the patterned first silicon dioxide film 504A as a mask.” EX2040, 19:6-8.
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`Dr. Smith additionally testified that layer “505A does act as – as the mask for
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`503” as shown in Figures 23(b) and 23(c), even though Dr. Smith understands the
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`’696 specification to only say “first organic film 503 is therefore etched using the
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`patterned first silicon dioxide film 504A as a mask.” EX2040, 20:19-20, 19:2-13
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`(citing EX1001, 24:7-10). This testimony is relevant to Petitioner’s assertions
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`(Reply 8-9) and Dr. Smith’s opinions in EX1050 ¶¶20-28 and Petitioner’s
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`arguments regarding purported “inconsistencies in the ’696 patent” concerning
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`whether a buried layer that has a lateral edge “in line and flush with [a lateral] edge
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`of” an overlying layer can act as a mask, because it is inconsistent with those
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`opinions and arguments. Specifically, Dr. Smith previously asserted that the ’696
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`patent is internally inconsistent because, he argued “three examples IPB identified
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`where a buried layer is called a ‘mask’ in the specification” contradict “at least
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`seven examples in the specification where a buried layer that is not called a
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`‘mask.’” EX1050, ¶27. But in the cross-examination testimony, Dr. Smith testified
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`that a layer “505A does act as – as the mask for 503,” even though the ’696
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`specification does not call layer 505A a mask. EX2040, 20:19-20, 19:2-13 (citing
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`EX1001, 24:7-10). This testimony is also relevant to Petitioner’s assertions and Dr.
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`Smith’s opinions in EX1050 ¶¶30-33 regarding whether “the Japanese ’371
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`application supports step h) of claim 13.” EX1050, ¶30; see also Reply 10-11
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`(“The specification identifies layer 359, not layer 358, as the mask for etching
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`layer 355 above.”). This cross-examination testimony is relevant because it
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`illustrates inconsistencies in Petitioner’s and Dr. Smith’s interpretation of the ’696
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`patent and the Japanese ’371 application. Dr. Smith previously testified that layer
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`358 is not used as a mask to etch layer 355 because the “Japanese ’371 application
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`makes no mention of using layer 358 as a ‘mask’” (EX1050, ¶31; Reply 11), but
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`on cross-examination inconsistently testified that “505A does act as – as the mask
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`for 503” as shown in Figures 23(b) and 23(c), even though this is not described in
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`the detailed description of the ’696 patent (see, e.g., Ex. 1001, 24:7-10). EX2040,
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`20:19-20.
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`-4-
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`In EX2040, at 20:21-22:1, Dr. Smith testified about processing layers 603,
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`4.
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`604A, and 605A in Figures 32(a) and 32(b) of the ’696 patent (EX1001). Dr. Smith
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`testified that “the patent describes 604A as a mask for the etching of the hole 611 into
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`film 603.” EX2040, 21:16-17. Dr. Smith additionally testified that “605A will act to
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`mask etching until the film is removed, until that film is completely removed,” as
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`shown in Figures 32(a) and 32(b). EX2040, 21:20-22:1. This testimony is relevant
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`to the same opinions in EX1050 ¶¶30-33 regarding whether “the Japanese ’371
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`application supports step h) of claim 13,” as identified in paragraph 3, above. This
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`cross-examination testimony is relevant because it illustrates inconsistencies in
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`Petitioner’s and Dr. Smith’s interpretation of the ’696 patent and the Japanese ’371
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`application. Dr. Smith previously opined that layer 358 is not used as a mask to
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`etch layer 355 because the “Japanese ’371 application makes no mention of using
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`layer 358 as a ‘mask’” (EX1050, ¶31; Reply 11), but now on cross-examination
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`has inconsistently testified that layer “605A will act to mask etching until the film
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`[603] is removed” as shown in Figures 32(a) and 32(b), even though this is not
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`expressly described in the detailed description of the ’696 patent (see, e.g., Ex.
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`1001, 29:6-12). EX2040, 21:20-22:1.
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`5.
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`In EX2040, at 27:13-33:12, Dr. Smith testified that a dry etching process,
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`such as reactive ion etching, could have a lateral etching component. Dr. Smith
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`testified that “an RIE [reactive ion etching] process could allow for a – could allow
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`-5-
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`for chemical species to result in an anisotropy”–that is “a lateral effect, a lateral
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`removal, which could be from the flow of – or the motion of chemical species.”
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`EX2040, 32:16-33:1. This testimony is relevant to Petitioner’s assertion (Reply 5-
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`6) and Dr. Smith’s opinion at EX1050 ¶¶8-19, regarding the construction of the
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`term “using the [designated layer] as a mask.” The testimony on cross is relevant
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`because, while Dr. Smith previously testified that the vertical sidewalls do not play
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`a role in dry etching, such as RIE, he now admits that there are lateral effects even
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`in these dry etches. Specifically, Dr. Smith previously opined that “vertical
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`sidewalls in the opening that defines the pattern being etched do not ‘mask’ the
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`etch and are not relevant to the masking function.” EX1050 ¶11. Dr. Smith also
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`opined that “the interior surfaces of the layers above the layer being etched do not
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`apply the masking role IPB and Dr. Glew suggest.” EX1050 ¶15. Dr. Smith has
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`also previously used the term “anisotropic” to describe “highly directional,” and
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`the term “anisotropic etching” to refer to “directional” etching. EX1050 ¶¶13-14
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`(citing to Plummer (EX1031, 626-27)). Dr. Smith also testified that “[a]nisotropic
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`etch conventionally is – conventionally is considered to be one direction.”
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`EX2040, 33:13-18. In contrast, Dr. Smith’s testimony on cross that an RIE process
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`could result in “anisotropy” where “lateral removal” could occur (e.g., via lateral
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`flow of etchant) (EX2040, 32:16-33:1), is inconsistent with his aforementioned
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`-6-
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`opinions that vertical sidewalls do not “mask” an etch, at least because vertical
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`sidewalls block lateral removal and lateral flow of etchant.
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`6.
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`In EX2040, at 33:13-38:9, Dr. Smith answered affirmatively when asked
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`whether reactive ion etching includes “neutral and ionic components,” which
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`“contribute to lateral removal.” When asked to confirm that “both neutral and ionic
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`species [are] present in reactive ion etching,” Dr. Smith answered “That’s right.”
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`EX2040, 36:22-37:3. Dr. Smith testified that “the combination of the chemically
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`reactive and chemically neutral species, it’s the combination of the chemical etch
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`and the physical etch, that result in things like anisotropy of an RIE process.”
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`EX2040, 37:22-38:4. When asked whether “both the neutral and ionic components
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`contribute to lateral removal,” Dr. Smith replied in the affirmative, “Yes, they
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`work together.” EX2040, 38:5-9. This testimony is relevant to the same opinions in
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`EX1050 ¶¶8-19, identified in paragraph 6, above, that “the interior surfaces of the
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`layers above the layer being etched do not apply the masking role IPB and Dr.
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`Glew suggest” (EX1050 ¶15), and “anisotropic etching” refers to “directional”
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`etching (EX1050 ¶¶13-14 (citing to Plummer (EX1031, 626-27))). See also Reply
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`5-6. Dr. Smith’s testimony on cross is relevant because it confirms that “the
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`combination of the chemically reactive and chemically neutral species” result in
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`“anisotropy of an RIE process” (EX2040, 37:22-38:4) and that “both the neutral
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`and ionic components contribute to lateral removal” (EX2040, 38:5-9). Dr.
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`-7-
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`Smith’s testimony on cross is relevant because it is inconsistent with his
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`aforementioned opinions, and Petitioner’s assertions, that vertical sidewalls do not
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`“mask” an etch (EX1050 ¶15; Reply 5-6), at least because he now concedes that
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`the vertical sidewalls block lateral removal and lateral flow of etchant.
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`7.
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`In EX2040, at 40:13-50:5, Dr. Smith testified regarding the terms
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`“transferring … while concurrently removing” and “transferring, at least partially
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`concurrently removing” in claim 28 of Grill (EX1005). When asked “[w]hat is the
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`difference between concurrently and partially concurrently,” Dr. Smith testified
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`that “simply said, concurrently, it wouldn’t cover the situation where one layer is
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`removed before another layer is completely removed.” EX2040, 44:14-21. This
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`testimony is relevant to Dr. Smith’s opinions at EX1050 ¶¶43-46, and Petitioner’s
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`related assertions regarding whether Claim 28 of Grill’s non-provisional
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`application is supported by Grill’s provisional application, and whether Grill can
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`claim a priority date earlier than its non-provisional filing date. See also Reply 14-
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`21. This testimony is relevant because it contradicts and is inconsistent with Dr.
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`Smith’s earlier opinion that “as I [Dr. Smith] understand it, claim 28 recites the
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`phrase ‘while concurrently removing,’ which indicates the removal process need
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`not be completed for the claim element to be satisfied”—i.e., that “while
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`concurrently removing” covers a case where the photoresist layer is not completely
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`removed as an underlying film is etched. EX1050 ¶46 n.1. This testimony is also
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`-8-
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`relevant because it contradicts and is inconsistent with Petitioner’s assertion that
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`“claim 28 reads ‘while concurrently removing,’ indicating the removal process
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`need not be completed.” Reply 21 n.6.
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`8.
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`In EX2040, at 47:13-50:5, Dr. Smith testified that the term “transferring
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`said via pattern … into said second dielectric layer, while concurrently removing
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`said via-patterned second layer of resist” of Grill’s claim 28 (EX1005, 13:47-50)
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`covers a case where some of the second layer of resist is removed after the second
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`dielectric layer is etched. Dr. Smith testified that in meeting this limitation of
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`Grill’s claim 28, “the photoresist cannot be removed before the dielectric layer is
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`patterned,” and that some “photoresist is removed” “after the second dielectric
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`layer is removed in that via pattern.” EX2040, 47:13-20, 48:8-49:2. This testimony
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`is relevant to Dr. Smith’s previous opinions at EX1050 ¶¶43-46, and Petitioner’s
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`related assertions regarding whether Claim 28 of Grill’s non-provisional
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`application is supported by Grill’s provisional application, and whether Grill can
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`claim a priority date earlier than its non-provisional filing date. See also Reply 14-
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`21. This testimony is relevant because it demonstrates Petitioner’s and Dr. Smith’s
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`analysis of claim 28 and whether it is supported by the earlier provisional
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`application depends upon an improper attempt to rewrite claim 28’s express
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`language, which requires “transferring said via pattern … into said second
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`dielectric layer, while concurrently removing said via-patterned second layer of
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`resist,” to include non-concurrent removal of a portion of the second layer of resist
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`after the second dielectric layer has been etched. This testimony is also relevant
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`because it is inconsistent with Dr. Smith’s testimony that “simply said,
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`concurrently, it wouldn’t cover the situation where one layer is removed before
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`another layer is completely removed.” EX2040, 44:14-21.
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`9.
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`In EX2040, at 40:13-50:5, Dr. Smith testified that the difference between
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`“transferring concurrently” at 13:47-50, and “transferring at least partially
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`concurrently” at 13:53-57 in Claim 28 of Grill (EX1005) is that 13:53-57 refers to
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`a “concurrent etch,” whereas 13:47-50 does not because the term “removing said
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`via-patterned second layer of resist” at 13:47-50 does not refer to the etching of a
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`film. See EX2040, 41:21-42:21. Dr. Smith testified that “it’s not etching of two
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`films in that first instance.” EX2040, at 44:12-13. (Dr. Smith used the phrase “first
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`instance” to refer to “line 47-ish to line 50,” which recites the term “transferring
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`said via pattern … into said second dielectric layer, while concurrently removing
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`said via-patterned second layer of resist.” EX2040, at 42:15-17; EX1005, 13:47-
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`50.) This testimony is relevant to Dr. Smith’s prior opinions at EX1050 ¶¶43-46,
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`and Petitioner’s related assertions regarding whether Claim 28 of Grill’s non-
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`provisional application is supported by Grill’s provisional application, and whether
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`Grill can claim a priority date earlier than its non-provisional filing date. See also
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`Reply 14-21. This testimony is relevant because it is inconsistent with Dr. Smith’s
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`-10-
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`previous opinions in EX1050, at ¶36, that an “overetch” technique is used to
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`remove resist pattern 359. This testimony is also relevant because it is inconsistent
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`with Petitioner’s assertion that the “overetch” technique is used to remove resist
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`pattern 359. See Reply 13.
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`10. In EX2040, at 50:6-51:15, Dr. Smith testified about his interpretation of
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`the term “features” and “substantially” in the following passage of Grill: “dual
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`relief patterns in which all features of a smaller area (via) pattern substantially
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`overlap with the features of a larger area (wiring) pattern.” EX1005, 7:25-30.
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`When asked whether “the features that are being referred to are openings,” Dr.
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`Smith responded affirmatively “[i]t is the openings … the openings in these two
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`layers.” EX2040, 51:4-9. Dr. Smith then confirmed that “the features I’m referring
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`to in that last sentence is the dual relief pattern, which collectively refers to those
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`openings, yes.” EX2040, 51:10-15. When asked whether the term “substantially”
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`in Grill’s phrase “a smaller area (via) pattern substantially overlap with the features
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`of a larger area (wiring) pattern” (EX1005, 7:25-30) would “encompass also the
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`term ‘completely,’” Dr. Smith answered in the affirmative, “[s]ure, yeah. That’s
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`right.” EX2040, 51:20-52:1. This testimony is relevant to Petitioner’s assertion
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`(Reply 23-24) and Dr. Smith’s opinion in EX1050 ¶¶55-57 concerning “whether
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`using Aoyama’s via pattern … eliminates the ‘dual-relief pattern’ Grill teaches”
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`and that “[t]he dual relief pattern collectively refers to the openings in the blue
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`layer (a wiring pattern) and the green layer (a via pattern),” where the wiring
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`pattern and via pattern are distinct. This testimony is relevant because Petitioner
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`and Dr. Smith rely on this sentence from Grill to argue that the dual relief pattern
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`in Grill would not be eliminated by applying Aoyama’s teachings, but their
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`interpretation of Grill’s sentence is nonsensical as it would result in the following
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`understanding that allows for the elimination not only of the dual relief pattern, but
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`also of the distinction between the wiring pattern and the via entirely: “dual relief
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`patterns in which all openingsfeatures of a smaller area (via) pattern
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`completelysubstantially overlap with the openingsfeatures of a larger area
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`(wiring) pattern.” Cf. EX1005, 7:25-30. That is, this testimony is relevant to show
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`that Dr. Smith’s understanding of the term “substantially overlap” includes
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`situations where the feature (i.e., opening) of underlying via pattern shares the
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`exact same feature (i.e., opening) of an overlying wire pattern, thereby eliminating
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`the distinction between the via pattern and the wire pattern. This testimony is also
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`relevant because it is inconsistent with the plain language of Grill, which describes
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`a “smaller area (via) pattern” and a “larger area (wiring) pattern.” EX1005, 7:22-
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`30.
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`11. In EX2040, at 52:2-53:6, Dr. Smith testified that “cross-sections going
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`into the page” in Grill might look different than what was shown in Grill’s figures.
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`When asked whether “other cross-sections going into the page might look different
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`-12-
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`than what’s shown in these figures [5A-5H of Grill],” Dr. Smith responded
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`affirmatively “[s]ure.” EX2040, 53:2-6. This testimony is relevant to what one of
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`ordinary skill would have understood based on Grill’s figures and the ’696 patent’s
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`figures. This testimony is also relevant to Dr. Smith’s previous opinions in
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`EX1050 ¶¶20-28 regarding the construction of the term, “using the [designated
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`layer] as a mask.” Dr. Smith opined in EX1050 at ¶24 that “the statement in IPB’s
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`Preliminary Response that ‘there are other cross-sections in which the second resist
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`pattern and the mask pattern, shown in one cross-section in Figures 22(b) and
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`22(c), either have edges lined up and flush with one another” is untrue. EX1050
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`¶24 (citing Paper 6 at 42). Dr. Smith’s cross-examination testimony is relevant
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`because, in confirming that other cross-sections of Grill’s figures 5A-5H going into
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`the page “might look different that what’s shown,” it contradicts his earlier opinion
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`that no such cross-sections proposed by Patent Owner in the preliminary response
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`could exist. Paper 6 at 42.
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`12. In EX2040, at 53:7-16, Dr. Smith testified that 8:24-31 of Grill (EX1005)
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`describes Grill’s Figure 6A. When asked whether “this portion of Grill [column 8,
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`lines 24 to 31] is describing Figure 6A,” Dr. Smith responded affirmatively,
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`“[T]hat's what it -- the paragraph starts off saying Figure 6A shows, so, yes, I
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`believe that's true.” EX2040, 53:7-13. When asked whether “this passage, Column
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`8, 24 to 31, describes Figure 5,” Dr. Smith responded negatively, “No. It says
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`U.S. Patent No. 6,197,696
`Figure 6A.” EX2040, 53:14-16. This testimony is relevant to Dr. Smith’s prior
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`opinions in EX1050 ¶65 and ¶73, regarding thicknesses of films in Figures 5A-5H
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`of Grill, and whether a person of ordinary skill in the art (“POSA”) would have
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`been motivated to combine Grill with Aoyama in the manner proposed by
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`Petitioner. This testimony on cross is relevant because it shows that Dr. Smith
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`improperly imported descriptions from Grill’s embodiment of Figure 6A into
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`Grill’s embodiment of Figures 5A-5H. Dr. Smith’s testimony on cross that the
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`passage in Grill (EX1005) at 8:24-31 describes Figure 6A, and not Figure 5,
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`contradicts Dr. Smith’s opinion (1) in EX1050 at ¶65 that “Grill’s hard mask
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`layers [of Figures 5A-5H] are about 20 to 50 nm thick,” and (2) at ¶73 that
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`“interlevel dielectric layer 58 [of Figures 5A-5H] is only about 20 to 50 nm thick,”
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`because he is deriving those measurements from the portions describing Figure 6.
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`13. In EX2040, at 53:17-54:11, Dr. Smith testified that he could not recall
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`where the ’696 patent or the ’696 foreign priority document discussed “overetch.”
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`When asked “[d]o you remember seeing the term ‘overetch’ in the ’696 patent?”
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`Dr. Smith responded “I can’t recall.” EX2040, 54:4-6. When asked “[d]o you
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`recall seeing the term ‘overetch’ in the Japanese ’371 application?” Dr. Smith
`
`responded “I can’t recall.” EX2040, 54:7-11. This testimony is relevant to the issue
`
`of whether the ’696 patent can claim priority to its foreign priority document. In
`
`particular, this testimony is relevant to Dr. Smith’s prior opinions at EX1050 ¶¶35-
`
`
`
`-14-
`
`
`
`IPR2016-01378
`U.S. Patent No. 6,197,696
`36 and Petitioner’s argument that the ’696 patent’s foreign priority document (the
`
`Japanese ’371 application) does not disclose using layer 355 as a mask. See also
`
`Reply 13-14. Dr. Smith opined that layer 355 was not used as a mask because
`
`“those of ordinary skill in the art would have already understood from their
`
`training that it would be common for layer 354 to be patterned before completely
`
`removing the remnants of second resist pattern 359” in a “technique, called
`
`‘overetch.’” EX1050 ¶36. However, Dr. Smith’s testimony on cross that he cannot
`
`recall the term “overetch” being used in either the ’696 patent or the Japanese ’371
`
`application is relevant because it shows that in his prior testimony Dr. Smith is
`
`importing teachings into the ’696 patent and the Japanese ’371 application.
`
`
`
`-15-
`
`
`
`IPR2016-01378
`U.S. Patent No. 6,197,696
`
`Dated: August 15, 2017
`
`
`
`Jordan M. Rossen
`Reg. No. 74,064
`ROPES & GRAY LLP
`2099 Pennsylvania Ave., NW
`Washington D.C. 20006-6807
`P: 202-508-4759/F: 617-235-9492
`jordan.rossen@ropesgray.com
`
`James L. Davis, Jr.
`Reg. No. 57,325
`ROPES & GRAY LLP
`1900 University Avenue, 6th
`Floor
`East Palo Alto, CA 94303-2284
`P: 650-617-4794/F: 617-235-9492
`james.l.davis@ropesgray.com
`
`
`
`
`
`
`
`Respectfully submitted by:
`
` /James L. Davis, Jr./
`Andrew N. Thomases (lead
`counsel) - Reg. No. 40,841
`ROPES & GRAY, LLP
`1900 University Ave., 6th Floor
`East Palo Alto, CA 94303
`(650) 617-4000/F: 617-235-9492
`andrew.thomases@ropesgray.com
`
`J. Steven Baughman
`Reg. No. 47,414
`Paul, Weiss, Rifkind, Wharton &
`Garrison LLP
`2001 K Street, NW
`Washington, DC 20006-1047
`P: 202-223-7340/F: 202-403-3740
`sbaughman@paulweiss.com
`
`Attorneys For Patent Owner
`
`
`
`
`
`
`
`16
`
`
`
`IPR2016-01378
`U.S. Patent No. 6,197,696
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that this PATENT OWNER’S MOTION
`
`
`
`
`
`FOR OBSERVATION ON CROSS EXAMINATION was served by filing this
`
`document through the Patent Trial and Appeal Board PTAB E2E, as well as
`
`providing a courtesy copy via e-mail to the following attorneys of record for the
`
`Petitioner listed below:
`
`Petitioner TSMC’s Counsel of Record:
`
`Darren M. Jiron, Darren.jiron@finnegan.com
`E. Robert Yoches, bob.yoches@finnegan.com
`J. Preston Long, j.preston.long@finnegan.com
`Joshua L. Goldberg, Joshua.Goldberg@finnegan.com
`
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`ATTN: Patent Administration, Two Freedom Square, 11955 Freedom Drive,
`Reston, VA 20190-5675
`
`
`Petitioner GlobalFoundries’s Counsel of Record:
`
`Christopher Carroll, christopher.carroll@whitecase.com
`75 State St, Boston, MA 02109-1814
`Shamita Etienne-Cummings, setienne@whitecase.com
`701 Thirteenth St NW, Washington, DC 20005-3807
`
`WHITE & CASE, LLP
`Dated:
`August 15, 2017
`
`Respectfully submitted,
`
`
`
`
`
`
`By:
`
`/Crena Pacheco/
`Name: Crena Pacheco
`
`
`ROPES & GRAY LLP
`
`
`
`
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