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`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 38
`Entered: August 24, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`and GLOBALFOUNDRIES U.S. INC.,
`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
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`1 This Order addresses issues common to all cases; therefore, we issue a
`single Order to be entered in each case. Also, GlobalFoundries U.S. Inc.’s
`motions for joinder in Cases IPR2017-00921, IPR2017-00922,
`IPR2017-00923, and IPR2017-00924 were granted.
`
`
`
`IPR2016-01376, IPR2016-01377, IPR2016-01378, IPR2016-01379
`Patent 6,197,696 B1
`
`
`Pursuant to Paper 12,2 oral argument in these inter partes reviews, if
`requested by either party and granted by the Board, is scheduled for
`September 12, 2017. Both parties requested oral hearing pursuant to
`37 C.F.R. § 42.70. Paper 31; Paper 32. The requests for oral hearing are
`granted.
`The hearing will commence at 2:00 PM EDT, on September 12,
`2017, on the ninth Floor of the Madison Building East, 600 Dulany
`Street, Alexandria, Virginia. The hearing will be open to the public for
`in-person attendance, which will be accommodated on a first-come,
`first-serve basis. The Board will provide a court reporter for the hearing and
`the reporter’s transcript will constitute the official record of the hearing.
`The identified inter partes reviews involve the same patent and
`similar asserted prior art. A combined hearing, therefore, is appropriate
`under the circumstances. Each side will have sixty (60) minutes total to
`present its argument. Petitioner will proceed first to present its case as to the
`challenged claims in all four proceedings, and may argue its motions to
`exclude and reserve rebuttal time. Thereafter, Patent Owner will respond to
`Petitioner’s arguments. Thereafter, Petitioner may make use of the time it
`has reserved, if any, to rebut any issues raised during Patent Owner’s
`presentation.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least seven business days prior to the hearing. The parties shall confer with
`each other regarding any objections to demonstrative exhibits, and file
`demonstrative exhibits with the Board at least two business days prior to the
`
`2 For convenience we cite to the papers in IPR2016-01376. Similar papers
`are available in each proceeding.
`
`2
`
`
`
`IPR2016-01376, IPR2016-01377, IPR2016-01378, IPR2016-01379
`Patent 6,197,696 B1
`
`hearing. For any issue that cannot be resolved after conferring with the
`opposing party, the parties may file jointly a one-page list of objections at
`least two business days prior to the hearing. The list should identify with
`particularity which demonstrative exhibits are subject to objection and
`include a short statement (no more than one sentence) of the reason for each
`objection. No argument or further explanation is permitted. We will
`consider the objections and schedule a conference call if necessary.
`Otherwise, we will reserve ruling on the objections until the hearing or after
`the hearing. Any objection to demonstrative exhibits that is not presented
`timely will be considered waived. Each party also shall provide a hard copy
`of its demonstrative exhibits to the court reporter at the hearing.
`The parties are directed to St. Jude Medical, Cardiology Division, Inc.
`v. The Board of Regents of the University of Michigan, Case IPR2013-00041
`(PTAB Jan. 27, 2014) (Paper 65), for guidance regarding the appropriate
`content of demonstrative exhibits. The parties are reminded that each
`presenter must identify clearly and specifically each demonstrative exhibit
`(e.g., by slide or screen number) referenced during the hearing to ensure the
`clarity and accuracy of the reporter’s transcript. The parties also should note
`that one member of the panel will be attending the hearing electronically
`from a remote location and that if a demonstrative exhibit is not filed or
`otherwise made fully available or visible to the judge presiding over the
`hearing remotely, that demonstrative exhibit will not be considered. The
`judge presiding remotely will not be able to view the screen in the hearing
`room.
`The Board expects lead counsel for each party to be present in person
`at the hearing, although any backup counsel may make the actual
`
`3
`
`
`
`IPR2016-01376, IPR2016-01377, IPR2016-01378, IPR2016-01379
`Patent 6,197,696 B1
`
`presentation, in whole or in part.3 If either party anticipates that its lead
`counsel will not be attending the hearing, that party should contact the Board
`by e-mail at Trials@uspto.gov no later than two days prior to the hearing to
`initiate a joint telephone conference with the other party and the Board to
`discuss the matter.
`Questions regarding specific audio-visual equipment should be
`directed to the Board at (571) 272-9797. Requests for audio-visual
`equipment are to be made by e-mail to Trials@uspto.gov at least five
`business days in advance of the hearing date. If the request is not received
`timely, the equipment may not be available on the day of the hearing.
`
`It is so ORDERED.
`
`
`3 Counsel for Petitioner GlobalFoundries U.S. Inc. is permitted to attend the
`hearing, but may not present arguments. See, e.g., IPR2017-00921,
`Paper 10, 8. Should the parties have any questions regarding procedures for
`the hearing, the parties may request a conference call.
`
`4
`
`
`
`IPR2016-01376, IPR2016-01377, IPR2016-01378, IPR2016-01379
`Patent 6,197,696 B1
`
`PETITIONER TAIWAN SEMICONDUCTOR MANUFACTURING
`COMPANY, LTD.:
`
`Darren M. Jiron
`E. Robert Yoches
`J. Preston Long
`Joshua L. Goldberg
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`darren.jiron@finnegan.com
`bob.yoches@finnegan.com
`j.preston.long@finnegan.com
`joshua.goldberg@finnegan.com
`
`PETITIONER GLOBALFOUNDRIES U.S. INC.:
`
`Christopher Carroll
`Shamita Etienne-Cummings
`WHITE & CASE, LLP
`christopher.carroll@whitecase.com
`setienne@whitecase.com
`
`PATENT OWNER:
`
`Andrew N. Thomases
`Jordan M. Rossen
`James L. Davis, Jr.
`ROPES & GRAY LLP
`andrew.thomases@ropesgray.com
`jordan.rossen@ropesgray.com
`james.l.davis@ropesgray.com
`
`J. Steven Baughman
`PAUL, WEISS, RIFKIND, WHARTON & GARRISON LLP
`sbaughman@paulweiss.com
`
`5
`
`
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