`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Taiwan Semiconductor Manufacturing Company, Ltd.
`
`Petitioner
`
`v.
`
`Godo Kaisha IP Bridge 1
`
`
`
`Patent Owner
`
`
`
`Patent No. 6,197,696
`Filing Date: March 23, 1999
`Issue Date: March 6, 2001
`
`Title: METHOD FOR FORMING INTERCONNECTION STRUCTURE
`
`
`Inter Partes Review No. IPR2016-01379
`
`
`
`PETITIONER’S REPLY UNDER 37 C.F.R. § 42.108(c)
`
`
`
`
`
`
`
`
`
`
`
`
`
`Table of Authorities
`
`Cases
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375
`(Fed. Cir. 2015) ............................................................................................ 1, 2, 3
`
`Goeddel v. Sugano, 617 F.3d 1350 (Fed. Cir. 2010) ................................................. 2
`
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016) ....................2, 3
`
`Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316 (Fed. Cir. 2008) ........ 1, 2, 3
`
`Statutes
`
`35 U.S.C. § 102(e) ..................................................................................................... 1
`
`35 U.S.C. § 112 ......................................................................................................1, 3
`
`Other Authorities
`
`Alarm.com Inc. v. Vivint, Inc., 2016IPR-00129, Paper 13 (May 3, 2016) ................ 3
`
`Core Survival, Inc. v. S&S Precision, LLC, PGR2015-00022, Paper 8
`(Feb. 19, 2016) ............................................................................................. 1, 2, 3
`
`MPEP §201.15 (7th ed. July 1998) ............................................................................ 3
`
`Polaris Wireless, Inc. v. TruePosition, Inc., IPR2013-00323, Paper 9
`(Nov. 15, 2013) ..................................................................................................... 2
`
`
`
`
`
`
`
`
`
`TSMC’s petition satisfied its initial burden of production by showing that
`
`Grill, on its face, is prior art under §102(e). Even though the law did not require it,
`
`TSMC referenced examples of evidence showing that the ’696 patent is not
`
`entitled to the benefit of foreign priority and that Grill is entitled to the filing date
`
`of its provisional. See Core Survival, Inc. v. S&S Precision, LLC PGR2015-00022,
`
`Paper 8, at 8-9 (Feb. 19, 2016).
`
`In its POPR, Patent Owner IPB did not offer the requisite §112 support for
`
`all limitations of the claims to establish foreign priority for the ’696 patent. Instead
`
`it argued that TSMC failed to prove the ’696 patent is not entitled to foreign
`
`priority. Thus, IPB defies the well-established burden framework and erroneously
`
`implies the ’696 patent is presumptively entitled to foreign priority.
`
`Once Petitioner shows a reference is prior art, the burden then shifts to
`
`Patent Owner to show the challenged claim benefits from a filing date before the
`
`prior art. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379
`
`(Fed. Cir. 2015); Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327
`
`(Fed. Cir. 2008) [TLC]. This requires showing “not only the existence of the earlier
`
`application, but why the written description in the earlier application supports the
`
`claim.’” Drinkware, 800 F.3d at 1379 (quoting TLC, 545 F.3d at 1327). Where
`
`there is a foreign priority claim, Patent Owner must identify §112 support in the
`
`priority document for all limitations of the claims. See Goeddel v. Sugano, 617
`
`
`
`1
`
`
`
`
`
`F.3d 1350, 1353–54 (Fed. Cir. 2010). Only if Patent Owner makes this showing
`
`does the burden then shift back to Petitioner to rebut Patent Owner’s arguments or
`
`to show the prior art benefits from an earlier filing date. Drinkware, 800 F.3d at
`
`1379–80; TLC, 545 F.3d at 1327–28. This burden-shifting framework is
`
`“warranted because the patentee affirmatively seeks to establish a proposition not
`
`relied on by the patent challenger and not a necessary predicate for the
`
`unpatentability claim asserted—effectively an affirmative defense.” In re Magnum
`
`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016).
`
`IPB attempts to avoid its burden of properly establishing foreign priority for
`
`the ’696 patent by attacking examples of why the ’696 patent is not entitled to
`
`priority, which TSMC did not even need to provide. See Core Survival at 8-9. IPB
`
`relies on Polaris Wireless, Inc. v. TruePosition, Inc., IPR2013-00323, Paper 9
`
`(Nov. 15, 2013), hoping to meet its burden by simply criticizing these examples
`
`TSMC identified as limitations lacking support. It cannot, according to the
`
`Drinkware/TLC framework. And the Board has rejected other propositions IPB
`
`seeks to derive from Polaris. See Core Survival at 8-10 & n.3 (rejecting the notion,
`
`based on Polaris, that a document is not prior art if the Petitioner fails to show the
`
`challenged patent is not entitled to priority). The Board did not find “any support in
`
`[Polaris] for the proposition that a Petitioner has any initial burden to contest
`
`entitlement to a provisional filing date,” and “the only showing Petitioner needed
`
`
`
`2
`
`
`
`
`
`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.’” Id. at 8-9.
`
`IPB’s arguments amount to requiring TSMC to disprove foreign priority,
`
`which would result in presumptive entitlement to foreign priority. But the Federal
`
`Circuit has rejected as unsound the notion that a patent can be presumed to benefit
`
`from an earlier filing date when the PTO did not examine the priority document.
`
`Drinkware, 800 F.3d at 1380. Claims for foreign priority fall into that category.
`
`MPEP §201.15 (7th ed.) (now §215). And, contrary to IPB’s suggestion, notice of
`
`a priority claim on the patent does not require Petitioner to disprove foreign
`
`priority, because TLC involved a priority claim (to a CIP, where earlier benefit is
`
`not automatic) on the face of the patent. See 545 F.3d at 1321 & n.2, 1327–28.
`
`TSMC’s petition was not required to show that Grill benefits from its
`
`provisional filing date, and IPB’s reliance on Alarm.com Inc. v. Vivint, Inc. is
`
`misplaced. The reference there did not predate the challenged patent, so
`
`establishing priority for the reference was “a necessary predicate” to the invalidity
`
`grounds. Magnum, 829 F.3d at 1376; see also IPR2016-00129, Paper 13, at 16
`
`(May 3, 2016). Here, establishing an earlier priority for Grill is not a “necessary
`
`predicate” because Grill is prior art, on its face, and remains so unless and until
`
`IPB identifies adequate §112 support for all limitations of the challenged claims on
`
`an element-by-element basis, as required.
`
`
`
`3
`
`
`
`
`
`Dated: November 23, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`By: /Darren M. Jiron/
`Darren M. Jiron, Lead Counsel
`Reg. No. 45,777
`
`
`
`Counsel for Petitioner
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`This is to certify under 37 C.F.R. § 42.6(e) that, on this 23rd day of
`
`
`
`
`
`November 2016, I caused counsel of record for the Patent Owner (as listed below)
`
`to be electronically served a true and correct copy of the “Petitioner’s Reply Under
`
`37 C.F.R. § 42.108(c).”
`
`J. Steven Baughman
`steven.baughman@ropesgray.com
`
`Andrew N. Thomases
`andrew.thomases@ropesgray.com
`
`IPBridgeTSMCPTABService@ropesgray.com
`
`
`Respectfully submitted,
`
`
`By: /Darren M. Jiron/
`Darren M. Jiron, Lead Counsel
`Reg. No. 45,777
`
`
`
`Counsel for Petitioner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: November 23, 2016