IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
`
`---------------------------------
` :
`TAIWAN SEMICONDUCTOR :
` :
`MANUFACTURING COMPANY, LTD., :
` :
` Petitioner, :
` :
` v. : IPR2016-01379
` :
`GODO KAISHA IP BRIDGE 1, : Patent No.
` :
` Patent Owner. : 6,197,696
` :
`---------------------------------
`
` The telephonic conference in the
`
`above-entitled matter convened at 2:02 p.m. on
`
`Wednesday, November 16, 2016, and the proceedings
`
`being taken down by stenotype and transcribed by
`
`Catherine B. Crump, a Notary Public in and for the
`
`District of Columbia.
`
`BEFORE:
`
` HON. JENNIFER CHAGNON
`
` HON. JUSTIN ARBES
`
` HON. MICHAEL FITZPATRICK
`
` Patent Trial and Appeal Board Judges
`
`1
`
`2
`
`3 4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 1 of 32
`
`TSMC Exhibit 1020
`TSMC v. IP Bridge
`IPR2016-01379
`
`
`
`November 16, 2016
`
`Washington, D.C.
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
`
`---------------------------------
` :
`TAIWAN SEMICONDUCTOR :
` :
`MANUFACTURING COMPANY, LTD., :
` :
` Petitioner, :
` :
` v. : IPR2016-01379
` :
`GODO KAISHA IP BRIDGE 1, : Patent No.
` :
` Patent Owner. : 6,197,696
` :
`---------------------------------
`
` The telephonic conference in the
`
`above-entitled matter convened at 2:02 p.m. on
`
`Wednesday, November 16, 2016, and the proceedings
`
`being taken down by stenotype and transcribed by
`
`Catherine B. Crump, a Notary Public in and for the
`
`District of Columbia.
`
`BEFORE:
`
` HON. JENNIFER CHAGNON
`
` HON. JUSTIN ARBES
`
` HON. MICHAEL FITZPATRICK
`
` Patent Trial and Appeal Board Judges
`
`1
`
`2
`
`3 4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 1 of 32
`
`TSMC Exhibit 1020
`TSMC v. IP Bridge
`IPR2016-01379
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 2
`
`APPEARANCES:
`
`On behalf of Petitioner:
`
`DARREN M. JIRON, ESQ.
`
`J. PRESTON LONG, ESQ.
`
`JOSHUA GOLDBERG, ESQ.
`
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`
`901 New York Avenue, N.W.
`
`Washington, D.C. 20001
`
`(202) 408-4000
`
`On behalf of Patent Owner:
`
`J. STEVEN BAUGHMAN, ESQ.
`
`ANDREW N. THOMASES, ESQ.
`
`JORDAN ROSSEN, ESQ.
`
`Ropes & Gray, LLP
`
`2099 Pennsylvania Avenue, N.W.
`
`Washington, D.C. 20006
`
`(202) 508-4606
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 2 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 3
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` P R O C E E D I N G S
`
` JUDGE CHAGNON: Good afternoon. This is
`
`Judge Chagnon. I also have Judges Arbes and
`
`Fitzpatrick on the line with me today.
`
` This a conference call for IPR 2016-01376,
`
`01377, 01378, and 01379.
`
` I just want to check whether we have someone
`
`from both parties on the line today. Who do we have
`
`for Petitioner?
`
` MR. JIRON: Hi, Your Honor. This is Darren
`
`Jiron. I'm with the law firm of Finnegan,
`
`representing TSMC, the Petitioner, and with me today
`
`are my colleagues, J.P. Long and Josh Goldberg.
`
` MR. BAUGHMAN: Hi, Your Honor. For Patent
`
`Owner, it's Steve Baughman from Ropes & Gray, and my
`
`colleagues Andrew Thomases and Jordan Rossen are on
`
`the line.
`
` JUDGE CHAGNON: Thank you, and do we have a
`
`court reporter on the line?
`
` COURT REPORTER: Yes. My name is Catherine
`
`Crump.
`
` JUDGE CHAGNON: All right. So I'll just ask
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 3 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 4
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`whichever party requested the court reporter to be on
`
`line today to just go ahead and file the transcript
`
`as an exhibit after the call.
`
` MR. JIRON: We will, Your Honor. Thank you.
`
` JUDGE CHAGNON: Thank you. I'm sorry. Who
`
`was that?
`
` MR. JIRON: That was Darren Jiron for
`
`Petitioner.
`
` JUDGE CHAGNON: Thank you so much.
`
` All right. So I believe Petitioner requested
`
`this call today. So we'll hear from Petitioner
`
`first.
`
` MR. JIRON: Thank you, Your Honor. This is
`
`Darren Jiron and we requested the call and thank you
`
`for accommodating the call today.
`
` There were two issues that we wanted to
`
`address. The first one related to a request for
`
`leave to file a motion to correct a typographical
`
`error in an exhibit, and the second was a motion for
`
`leave to file a reply to the Patent Owner Preliminary
`
`Response.
`
` If it would be okay with Your Honor, I could
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 4 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 5
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`proceed with the typographical error issue first.
`
` JUDGE CHAGNON: Okay. That works.
`
` MR. JIRON: Okay. So the typographical error
`
`that occurred is in Exhibit 1002 and that appeared in
`
`the same numbered exhibit in each one of the four IPR
`
`proceedings.
`
` Specifically, the typographical error is in
`
`Appendix B of Exhibit 1002, and Appendix B starts at
`
`page 126 of the PDF for Exhibit 1002. Specifically
`
`on page B-10 of Appendix B, there was a sentence that
`
`appears in the middle of the cell of the claim chart,
`
`and the sentence currently reads:
`
` "A person of ordinary skill in the art would
`
`have understood that Etching Layer 12 under such
`
`circumstances concurrently etches Layer 58, because
`
`the two layers have similar etched properties."
`
` And the typographical error that occurred in
`
`this sentence was with the number 58. Specifically,
`
`No. 58 should have been No. 62 to refer to the
`
`appropriate layer that was being addressed.
`
` As evidence that it was a typographical
`
`error, one could look to other areas of the same
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 5 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 6
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`cell. For example, the last sentence of the cell
`
`indicates that the two layers being addressed as
`
`being concurrently etched are Photoresist Layer 62
`
`and Dielectric Layer 12. That was the ultimate
`
`conclusion of this section of the claim chart and it
`
`was clearly talking about Layers 62 and 12.
`
` Additionally, in the second to the last
`
`paragraph, it's talking about, again, the layers of
`
`the etch as being Layer 62 and Layer 12. If you look
`
`back on page B-9, there was actually -- in the
`
`language of the claim itself, it refers to the two
`
`layers that were supposed to be concurrently etched
`
`as being the second dielectric area and the second
`
`layer of resist, and to make it clear which layers
`
`are being discussed, the expert has color coding on
`
`the claim language.
`
` The second dielectric layer appears in blue
`
`and that matches up with Layer 12, and the second
`
`layer of resist, the layer that was being
`
`concurrently etched, that has been designated as pink
`
`in the claim language, and that matches up with Layer
`
`62, the pink layer.
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 6 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 7
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` So given those indications, there's ample
`
`support to show that when the expert said Layer 58 in
`
`the third to the last paragraph on page B-10, he
`
`actually intended to say Layer 62 to be consistent
`
`with the rest of the patent.
`
` JUDGE CHAGNON: Okay. Thank you.
`
` We'll stay on this issue, and I believe in
`
`the E-mail, Patent Owner also said they opposed this
`
`request. So we'll hear from Patent Owner on this
`
`issue before we move on.
`
` MR. BAUGHMAN: Thanks, Your Honor. It's
`
`Steve Baughman for Patent Owner.
`
` Respectfully, we don't agree, as the
`
`Petitioner argued in its E-mail, that changing this
`
`testimony to refer to a different layering grill, 62
`
`instead of 58, is merely a typographical error
`
`indicated by the document itself, and to begin with,
`
`I think it's helpful to bear in mind what the
`
`Petitioner is arguing about, and I think maybe the
`
`path that it took us to get to this page is
`
`illustrative of this.
`
` This is not, actually, an argument in the
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 7 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 8
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`petition or even an argument in the body of the
`
`declaration of Petitioner's Dr. Smith. It's a line
`
`in this appendix claim chart to a declaration that's
`
`incorporated by reference into the petition without
`
`any substantive discussion.
`
` So they're asking permission on this call to
`
`modify an opinion that affects no argument that's
`
`actually stated in the petition, and we pointed that
`
`out in our Patent Owner Preliminary Response.
`
` We've also actually briefed the particular
`
`argument that is in the middle of the cell that
`
`counsel was speaking of here. There is certainly
`
`mention of Photoresist Layer 62 in this cell, and I
`
`would point out that every time Dr. Smith talks about
`
`that Layer 62, he calls it Photoresist Layer 62.
`
` So it's not a mere substitution of numbers
`
`here. It's an intermediate argument about
`
`composition of layers. If you look elsewhere in the
`
`chart, there are other places where the composition
`
`of Layer 58 is discussed as well. It's not a random
`
`number, but one of the elements of the figures, one
`
`of the layers discussed in this cell.
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 8 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 9
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` It's repeated in all four declarations that
`
`Dr. Smith signed. So allowing this change of numbers
`
`would substantively alter the layers we're talking
`
`about and it would alter the briefing we've already
`
`submitted about this argument about composition.
`
` Respectfully, we also don't see any support
`
`in the provisional application for arguing that Layer
`
`62 has the similar etched property that's referred to
`
`in this paragraph that talks about Layer 58.
`
`There's, of course, no citation at the end of that
`
`paragraph to begin with.
`
` So we don't agree that this is merely a typo
`
`that wouldn't alter the substantive course of the
`
`briefing to date. Again, we've briefed -- if you
`
`look at our Patent Owner preliminary response in the
`
`1376 matter, for example, Paper 6 at pages 28 to 30,
`
`we've talked about this argument as they made it.
`
` If they were permitted to change the basis of
`
`their petition on this ground, we would certainly
`
`need an opportunity to analyze and consider possible
`
`expert testimony about it and file an additional
`
`response to this portion of their argument, but
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 9 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 10
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`that's really not appropriate here. It would be
`
`prejudicial to ask us to do that at this point in the
`
`proceeding, especially while the clock is ticking on
`
`institution decisions here.
`
` IP Bridge and our experts and counsel are
`
`actively engaged in the other board matters and
`
`litigation matters. They waited a couple of weeks
`
`here, more than two weeks, to raise this issue after,
`
`I suppose, reading about it in our Patent Owner
`
`Preliminary Response before even asking to have a
`
`meet and confer.
`
` Respectfully, it would be prejudicial to make
`
`this change which is certainly not merely
`
`typographical.
`
` JUDGE CHAGNON: Okay. Thank you.
`
` Petitioner, do you have anything else to add
`
`on this point?
`
` MR. JIRON: Sure, Your Honor.
`
` One of the points was that the chart was
`
`somehow incorporated by reference, and that's simply
`
`not the case. There was no incorporation by
`
`reference to the chart. In fact, this whole chart
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 10 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 11
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`was really proffered as a demonstration that evidence
`
`exists that the cited prior art would be entitled to
`
`an earlier priority date if needed to show in such a
`
`case that the Patent Owner would raise an affirmative
`
`defense-type argument if it was, actually, not
`
`something that the Petitioner was relying upon at all
`
`and it wasn't incorporated by reference.
`
` And the next argument that counsel put
`
`forward was that it was something that counsel had
`
`grieved and that it would be prejudicial to allow
`
`Petitioner to correct the error. The fact that
`
`Patent Owner grieved the issue actually is a bit --
`
`relying upon that as a reason not to allow the change
`
`is a little bit odd given the fact that the Patent
`
`Owner selected that issue to grieve despite the fact
`
`that there are numerous other references even in that
`
`same cell itself that are sufficient to show that the
`
`layers being addressed are 62 and 12.
`
` I mean, I would suggest that even without a
`
`correction of the typographic error, the rest of the
`
`cell makes it perfectly clear that the patent expert
`
`or the technical expert was clearly talking about
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 11 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 12
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`Layers 62 and 12, and there would be sufficient
`
`support in the rest of the cell alone to demonstrate
`
`that fact even without the correction. The
`
`correction is really just for purposes of making
`
`everything consistent with one another, not -- it
`
`wouldn't be prejudicial to Patent Owner at all.
`
` JUDGE CHAGNON: Just to be clear, the relief
`
`that you're requesting, are you requesting
`
`authorization to go ahead and correct it or are you
`
`requesting authorization to file a motion to correct
`
`it?
`
` MR. JIRON: Right. Well, according to Rule
`
`104(C), it would -- we could ask for a motion to make
`
`the correction and we would be happy to do that. On
`
`the other hand, we think that it is of the type of
`
`typographical error that the board has taken the
`
`conference call as, basically, a request to correct
`
`the typographical error as sufficient, and that would
`
`be, we would think, the simplest thing to do in this
`
`matter.
`
` JUDGE CHAGNON: Okay. Great. I just wanted
`
`to make sure everybody was on the same page.
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 12 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 13
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` Just procedurally today, we're going to hear
`
`from the parties on all of these issues, and then
`
`we're not going to make decisions on the call today.
`
`We're just going to take everything under advisement
`
`and issue an order, likely, in the next day or so.
`
` MR. BAUGHMAN: Your Honor, I'm sorry. Steve
`
`Baughman for Patent Owner.
`
` Just before we move off of this issue, may I
`
`just offer a citation to show where it's incorporated
`
`by reference? I would like to respond to that one
`
`point.
`
` JUDGE CHAGNON: Okay. Go ahead.
`
` MR. BAUGHMAN: On page 29 of the petition in
`
`Footnote 3, the Petitioner refers to Exhibit 1002,
`
`paragraph 153. Paragraph 153 is in Dr. Smith's
`
`declaration which points back to this claim chart in
`
`its entirety.
`
` That's where we submit it's incorporated by
`
`reference.
`
` Thank you, Your Honor.
`
` JUDGE CHAGNON: Thank you.
`
` So if we've heard everything for both parties
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 13 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 14
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`on this issue, we can move on to the other question
`
`about the reply briefing that's being requested.
`
` MR. JIRON: Thank you, Your Honor. This is
`
`Darren Jiron for Petitioner again.
`
` So on this issue, the Petitioner is
`
`requesting leave to file a reply under Rule 108(C),
`
`and we believe there's good cause to request the
`
`reply, basically, to address a case of burden
`
`shifting that has occurred in Patent Owner's
`
`Preliminary Response.
`
` So in this particular situation, the
`
`arguments that the Patent Owner raised in its
`
`preliminary response actually are contrary to the
`
`burden framework that is set up by the applicable
`
`law, specifically, the guidance provided by the
`
`Federal Circuit case Dynamic Drinkware.
`
` The Petitioner would like an opportunity to
`
`further address in a reply the specific burden
`
`shifting arguments that Patent Owner has raised that
`
`go against the burden framework that's laid out in
`
`Dynamic Drinkware.
`
` So, for example, in the petition, the
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 14 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 15
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`Petitioner cited prior art, a document referred to as
`
`"grill" and established according to the Dynamic
`
`Drinkware burden that the grill qualifies as prior
`
`art under Section 102(E), in the Patent Owner
`
`Preliminary Response. Rather than actually disputing
`
`that the grill qualifies as prior art under 102(E),
`
`the Patent Owner took a different tact and argued
`
`that Petitioner had failed to show the grill as prior
`
`art and not because it doesn't qualify according to
`
`its date, but, rather, because it alleged that the
`
`Petitioner had made a failure and the failure that
`
`the Patent Owner alleged had been committed was
`
`Petitioner not demonstrating that the 696 patent, the
`
`one at issue here, was not entitled to the benefit of
`
`foreign priority based on a Japanese document called
`
`the 371 Application.
`
` So, basically, rather than the Patent Owner
`
`following Dynamic Drinkware burden framework that's
`
`set up that says that once the petitioner makes a
`
`prime facia case of showing that there's prior art
`
`that exists, if the Patent Owner wishes to rely upon
`
`an earlier priority, the burden falls onto the
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 15 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 16
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`shoulders of the patent owner to demonstrate that it
`
`is entitled to the benefit of earlier foreign
`
`priority, and to do that would require a showing that
`
`the claims and the limitations of the claims find
`
`one-twelfth support in the earlier priority document.
`
` That didn't happen here. Rather, the Patent
`
`Owner just argued that the petitioner has a deficient
`
`petition because it failed to prove in its petition
`
`that the 696 patent was not entitled to the benefit
`
`of foreign priority.
`
` So, effectively, that's the burden shifting
`
`that we would like to focus on in the reply. The
`
`authority that the Patent Owner relied upon for
`
`suggesting that that's an appropriate action here was
`
`a board decision in 2013 called Polaris Wireless, and
`
`we'd also like to address in the reply the specific
`
`legal issues associated with Polaris Wireless and the
`
`fact that Polaris Wireless, being the board's
`
`decision from 2013, was actually implicitly overruled
`
`by the Federal Circuit decision in Dynamic Drinkware
`
`from 2015, which clearly set forth the burden of
`
`framework.
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 16 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 17
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` But even more importantly, a later board
`
`decision in the Core Survival case from February 19th
`
`of this year, 2016, actually addressed an issue very
`
`similar to the one in this case that deals with the
`
`priority, and the Core Survival board expressly filed
`
`the burden framework that's set forth in Dynamic
`
`Drinkware and expressly rejected the same types of
`
`arguments that Patent Owner is making in this case,
`
`and that is that Polaris Wireless provided some
`
`justification for not following the burden framework,
`
`the appropriate burden framework, as later set forth
`
`in Dynamic Drinkware.
`
` Specifically, in Core Survival, the board
`
`found that there is no initial burden on the
`
`Petitioner to contest the benefit of priority.
`
`Rather, that falls on the shoulders of the Patent
`
`Owner. So to suggest, as Patent Owner has done here,
`
`that there's a deficiency in the petition based upon
`
`a theory of burden shifting is inappropriate and one
`
`that we would like to further address in a reply.
`
` JUDGE CHAGNON: Thank you.
`
` We'll hear from Patent Owner.
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 17 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 18
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` MR. BAUGHMAN: Thanks, Your Honor. It's
`
`Steve Baughman for Patent Owner.
`
` Respectfully, it was Petitioner who raised
`
`fully in the four petitions the legal and factual
`
`issues concerning the prior art status of this
`
`"grill" reference in relation to the challenged
`
`claims of the 696 patent. That's clear from Rule
`
`22(A)(2), which requires a full statement of the
`
`reasons for the relief requested, governing law,
`
`rules, and precedent.
`
` It is clear from the Polaris case, which we
`
`did cite in our Patent Owner Preliminary Response and
`
`which, importantly, is discussed in Core Survival, as
`
`Patent Owner just acknowledged, but in a way, I think
`
`Patent Owner is overlooking. If you take a look,
`
`Your Honors, at page 9 of Core Survival, in Footnote
`
`3, you'll see that the board in this much more recent
`
`case talks approvingly about Polaris as identifying
`
`the best practice for what's supposed to be in a
`
`petition in terms of what the petition should
`
`contain, and it warns about the kind of gamesmanship
`
`that the Petitioner engaged in here, and I would like
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 18 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 19
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`to read a piece of that footnote.
`
` "Although the Patent Owner initially bears
`
`the burden of production on the issue of priority,
`
`there is generally no opportunity for a petitioner to
`
`submit additional evidence or argument at the
`
`institution stage. Thus, if the patent owner meets
`
`its burden and the petition contains nothing to rebut
`
`presumptively Patent Owner's evidence supporting a
`
`priority claim, the petitioner's case is in peril."
`
` And what Polaris says, the Polaris case we
`
`cited, IPR2013-00323, Paper 9 at page 29 is that our
`
`obligation to respond about the priority date of our
`
`696 patent claims is commensurate in scope with the
`
`points and contentions raised by the Petitioner, and
`
`that's what we did here in the Patent Owner
`
`Preliminary Response.
`
` They raised three arguments that they thought
`
`indicated a lack of priority to the facial claim to
`
`the foreign priority document, which is, I think,
`
`uncontested, and we responded to those. Therefore,
`
`for purposes of institution, we have met our burden
`
`and the date that needed to be responded to for the
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 19 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 20
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`696 patent is that foreign priority date.
`
` We also cited the alarm.com case,
`
`IPR2016-00129, which shows the burden of production
`
`is initially on the petitioner, and the need to show
`
`the grill was prior art as of its provisional date
`
`was on the petitioner's shoulder to deal with.
`
`Frankly, as the petition recognized, I think when
`
`Your Honors take a look at what's in the petition,
`
`you'll see that they did already raise and brief
`
`these issues.
`
` They briefed the issue of 696's entitlement
`
`to its foreign priority. They addressed the grill's
`
`entitlement to its foreign provisional filing date,
`
`although in a way that we think is procedurally
`
`improper by incorporating by reference, and they
`
`cited a bunch of case law and precedent to these
`
`issues at pages 20 and 21 and pages 28 and 29 and
`
`Note 3 in the proceeding we've been discussing, the
`
`1376 proceeding.
`
` So there's certainly no surprise about what
`
`needed to be argued here. The priority claim is on
`
`the face of the patent to meet that foreign priority
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 20 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`date, their grill reference needed, the benefit of
`
`Page 21
`
`its provision.
`
` They made arguments about what burden the law
`
`imposed. We responded to those arguments in our
`
`Patent Owner preliminary response. I think in our
`
`meet and confer, Petitioner didn't identify anything
`
`they thought we had misstated in the cases we cited.
`
`Again, Polaris is addressed and not, I think, in the
`
`way that's pertinent here.
`
` In Core Survival, it's showing that it is
`
`still not only good law, but also shows best practice
`
`in the petition if Petitioner wants to raise it at
`
`institution.
`
` So, respectfully, there's no reason here for
`
`Petitioner to brief again these legal issues it
`
`already raised in its four petitions. The rule
`
`they're invoking here, Rule 108(C) about the
`
`possibility of reply for good cause, was added
`
`because of the possibility of declaration evidence
`
`from the Patent Owner, and there's no argument here
`
`that Petitioner's request results from something like
`
`that.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 21 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 22
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` It's really just a wish to re-brief the legal
`
`issues it's already raised and, respectfully, it's
`
`improper to use our paper as a roadmap for a do-over
`
`on this legal briefing and, again, to get around the
`
`word limits in their petition with additional paper
`
`to argue something they should have addressed if they
`
`thought it was going to be pertinent at institution
`
`in their petition at greater length, because, again,
`
`they raised the issues. They made decisions about
`
`what to say about them, cited the cases they thought
`
`were important and left it at that.
`
` So there's really no cause for a do-over now
`
`to reargue the law before the board, including their
`
`own Core Survival case that told them they wouldn't
`
`get a second chance.
`
` Again, it's prejudicial to have more briefing
`
`on this now, not only in terms of the clock ticking,
`
`but also because institution is one of the few points
`
`in these proceedings where patent owners get a chance
`
`to respond with the last word on the adequacy of what
`
`the petition has shown. There's no good cause here
`
`to divert from that normal structure the laid out for
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 22 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 23
`
`briefing.
`
` The law has been put before the board. I'm
`
`not sure Your Honors will be able to work through the
`
`cases that both sides have cited, and if the board
`
`were to grant here still more briefing, it's hard to
`
`really imagine a situation in which a reply brief
`
`would be denied, because these issues have been
`
`raised and addressed by both sides.
`
` Thanks, Your Honor.
`
` JUDGE CHAGNON: Thank you.
`
` Just a couple of questions that I have: If
`
`we were to authorize briefing, Petitioner, what kind
`
`of timing and pages are you seeking?
`
` MR. JIRON: Your Honor, this is counsel for
`
`Petitioner. We were thinking approximately seven
`
`pages and about a week, so maybe due a week from
`
`today.
`
` JUDGE CHAGNON: Okay. And would Patent Owner
`
`be requesting a surreply?
`
` MR. BAUGHMAN: Yes, Your Honor. We don't
`
`think that that number of pages is anywhere
`
`appropriate given the attention this was given by
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 23 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 24
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`Petitioner in its opening papers, though we would ask
`
`for a commensurate number of pages to respond if they
`
`were given all this additional briefing.
`
` We'd respectfully suggest two pages should be
`
`more than sufficient since all the cases have been
`
`briefed already.
`
` JUDGE CHAGNON: Okay. Thank you.
`
` I just want to make sure that we've heard
`
`everybody's positions on all of these issues.
`
` So, Petitioner, do you have anything else
`
`quickly to add?
`
` MR. JIRON: Yes, Your Honor, just on a couple
`
`of quick points in rebuttal.
`
` This isn't a do-over, as counsel for Patent
`
`Owner suggested. It is not to address anything that
`
`we thought we got wrong somehow in the petition.
`
`It's actually to address a specific really
`
`unforeseeable position that the Patent Owner has
`
`raised, one that couldn't be foreseen because it's
`
`one that goes against the Federal Circuit law. It's
`
`one that, basically, attempts to shift the burden,
`
`one that's clearly defined in the law as on the
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 24 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 25
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`Patent Owner to establish entitlement to foreign
`
`priority, basically, to shift that burden to
`
`Petitioner to disprove that that entitlement exists,
`
`and that's what we were hoping for in the reply, was
`
`to address that issue in the law.
`
` Counsel for Patent Owner read a couple of
`
`things from Corelogic and suggested that, as
`
`Corelogic does say, it talks about best practices,
`
`and the evidence that was included was the few
`
`examples from the claims that Petitioner believes are
`
`not supported in the earlier foreign priority
`
`documents were raised as best practices, as was the
`
`evidence from the claim chart in Appendix B, which
`
`actually talks about an even further level down of
`
`the support in the prior art provision, that provides
`
`support there.
`
` So those things were raised as best
`
`practices, but that doesn't change the fact that the
`
`burden of establishing entitlement to foreign
`
`priority lies with the patent owner, and that's what
`
`the Patent Owner is effectively arguing should be
`
`shifted onto the shoulders of the Petitioner.
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 25 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 26
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` I'd like to read just a couple of excerpts
`
`from the Core Survival case that Patent Owner did not
`
`include in his excerpts.
`
` Specifically, the Core Survival case when
`
`addressing the Dynamic Drinkware case that: "We do
`
`not agree with Patent Owner that Petitioner has the
`
`initial burden of showing that the patent at issue is
`
`not entitled to an earlier priority date for
`
`unpatentability purposes. Rather, a patentee must
`
`demonstrate entitlement to a priority date when
`
`patentee relies on that priority date to overcome an
`
`anticipation or obviousness argument."
`
` So, clearly, they're restating the Dynamic
`
`Drinkware principle that the patentee is the one that
`
`bears the burden to establish entitlement to the
`
`priority date.
`
` Additionally, the Core Survival board said
`
`that: "Contrary to the Patent Owner's position, the
`
`only showing that the Petitioner needed to make is
`
`that the art must have existed as of the date of
`
`invention, presumed to be the filing date of the
`
`application, until an earlier date is proved."
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Page 26 of 32
`
`
`
`IPR2016-01379
`
`November 16, 2016
`
`Washington, D.C.
`
`Page 27
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` And that's what needs to occur her
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
