Case IPR2016-01379
`Patent No. 6,197,696
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
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`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`Petitioner
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`v.
`
`GODO KAISHA IP BRIDGE 1
`Patent Owner
`______________
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`Case IPR2016-01379
`Patent 6,197,696
`______________
`
`Before the Honorable JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
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`PATENT OWNER'S SUR-REPLY
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`Patent No. 6,197,696
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`Petitioner
`
`v.
`
`GODO KAISHA IP BRIDGE 1
`Patent Owner
`______________
`
`Case IPR2016-01379
`Patent 6,197,696
`______________
`
`Before the Honorable JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
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`
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`PATENT OWNER'S SUR-REPLY
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`TABLE OF AUTHORITIES
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`Case IPR2016-01379
`Patent No. 6,197,696
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`CASES
`Alarm.com Inc. v. Vivint, Inc.,
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`IPR2016-00129, Pap. 13 (P.T.A.B. May 3, 2016) ............................................... 3
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` PAGE(S)
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`Core Survival, Inc. v. S&S Precision, LLC,
` PGR2015-00022, Pap. 8 (P.T.A.B. Feb. 19, 2016) .......................................... 2, 3
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ........................................................................ 1, 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) ............................................................................ 3
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`Lupin Ltd. v. Pozen Inc.,
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`IPR2015-01775, Pap. 15 (P.T.A.B. Mar. 1, 2016) ............................................... 2
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`Polaris Wireless, Inc. v. TruePosition, Inc.,
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`IPR2013-00323, Pap. 9 (P.T.A.B. Nov. 15, 2013) ............................................... 1
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`Samsung Elecs. Co., Ltd. v. Imperium (IP) Holdings,
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` IPR2015-01233, Pap. 14 (P.T.A.B. Dec. 1, 2015) .............................................. 1
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`Tech. Licensing Corp. v. Videotek, Inc.,
`545 F.3d 1316 (Fed. Cir. 2008) ............................................................................ 2
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`Varian Med. Sys., Inc. v. William Beaumont Hosp.,
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`IPR2016-00163, Pap. 14 (P.T.A.B. May 6, 2016) ............................................... 1
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`Case IPR2016-01379
`Patent No. 6,197,696
`Petitioner’s Reply (Pap. 9) first violates the Board’s authorizing Order by
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`arguing at length “whether a burden has been met” (Pap. 7 (Order) at 3; see Reply
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`1 (arguing “satisfied . . . initial burden,” etc.)), and then proceeds to misstate the
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`two distinct burdens of proof imposed in an IPR: a burden of persuasion that is al-
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`ways on Petitioner, and a burden of production that can shift. Dynamic Drinkware,
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`LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
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`As to entitlement for purposes of institution to the priority claim made on
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`the face of the ’696 patent, where (as here) that issue is “raised by Petitioner in its
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`petition, by identifying, specifically, the features, claims, and ancestral applications
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`allegedly lacking . . . support,” Patent Owner meets its burden of production by
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`addressing those arguments “in a manner that is commensurate in scope with the
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`specific points and contentions raised by Petitioner.” Polaris Wireless, Inc. v.
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`TruePosition, Inc., IPR2013-00323, Pap. 9 (Inst. Dec. (I.D.)), at 29-34 (Nov. 15,
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`2013). Petitioner’s suggestion that Drinkware implicitly overruled Polaris (Reply
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`2; see also EX. 1019, 16:12-22) is simply wrong: the Board continues to apply,
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`post-Drinkware, the law regarding institution and reasonable likelihood of prevail-
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`ing as explained in Polaris. See, e.g., Varian Med. Sys., Inc. v. William Beaumont
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`Hosp., IPR2016-00163, Pap. 14 (I.D.), at 10-12 (May 6, 2016) (expressly follow-
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`ing both Drinkware and Polaris in finding Patent Owner rebutted for institution
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`Petitioner’s contention regarding priority for element of challenged claim); Sam-
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`1
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`sung Elecs. Co., Ltd. v. Imperium (IP) Holdings, IPR2015-01233, Pap. 14 (I.D.), at
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`Case IPR2016-01379
`Patent No. 6,197,696
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`3-4 (Dec. 1, 2015) (applying Polaris at institution); Lupin Ltd. v. Pozen Inc.,
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`IPR2015-01775, Pap. 15 (I.D.), at 10-12 (Mar. 1, 2016) (Owner sufficiently
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`showed entitlement to priority for institution by rebutting specific contentions).
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`TSMC also incorrectly argues (Reply 2) that the Board in Core Survival
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`broadly rejected this approach, when in fact the Core panel simply recognized, as
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`did Polaris (at 29), that a patent’s entitlement to an ancestral application’s priority
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`date is not presumed. Core Survival, Inc. v. S&S Precision, LLC, PGR2015-
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`00022, Pap. 8 (I.D.), at 8-9 (Feb. 19, 2016). To the contrary, the Core panel ex-
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`pressly noted it was “not confronted by [the] situation”—as in the present case—
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`where the Petition included specific arguments that certain claim elements were
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`not entitled to priority and Patent Owner rebutted those specific contentions. Id. at
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`9 n.3 (“Patent Owner in this case has produced no evidence or argument”).1 When
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`1 Nor does Goeddel v. Sugano, 617 F.3d 1350 (Fed. Cir. 2010) —addressing final
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`interference rulings with no mention of burden-shifting—support Petitioner’s as-
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`sertion (contradicted by the post-Drinkware decisions above) that, “[w]here there
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`is a foreign priority claim, Patent Owner must identify §112 support in the priority
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`document for all limitations of the claims” at the institution stage of an IPR. Reply
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`1. Similarly inapt are Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
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`2
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`a Patent Owner provides rebuttal “commensurate in scope” with Petitioner’s argu-
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`Case IPR2016-01379
`Patent No. 6,197,696
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`ments, it meets its burden and the patent is accorded its priority date for institution.
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`It is Petitioner’s burden to show in its Petition that a reference is prior art to
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`the challenged claims, Varian at 9, and as discussed in Paper 6 (Prel. Resp.) at 22-
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`26, here this required showing Grill is entitled to its provisional application’s prior-
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`ity date, as Petitioner clearly recognized from the face and substance of the ’696
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`patent. Compare Alarm.com Inc. v. Vivint, Inc., IPR2016-00129, Pap. 13 (I.D.) at
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`16 (May 3, 2016) (“Petitioner recognized . . . the evidence of record demonstrate[d]
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`a need to show” entitlement), with Petition (Pap. 2) at 28-29 n.3. Cf. Drinkware,
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`800 F.3d at 1381 (claim to earlier reduction to practice not apparent from patent,
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`and petitioner had no way of knowing owner would attempt to swear behind). In-
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`deed, the same Core decision Petitioner relies on belies the picture of respective
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`burdens it now tries to paint: “[a]lthough the patent owner initially bears the bur-
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`den of production on the issue of priority, . . . if the patent owner meets its burden
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`and the petition contains nothing to rebut preemptively patent owner’s evidence
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`supporting a priority claim, the petitioner’s case is in peril.” Core, at 9 n.3.
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`1327-28 (Fed. Cir. 2008) (a 2008 district court trial appeal), and In re Magnum Oil
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`Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016) (discussing burdens in reviewing
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`IPR final written decision on obviousness, not priority issues or at institution).
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`3
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`Case IPR2016-01379
`Patent No. 6,197,696
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`Dated: December 1, 2016
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`
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`Andrew N. Thomases (backup
`counsel) - Reg. No. 40,841
`ROPES & GRAY, LLP
`1900 University Ave., 6th Floor
`East Palo Alto, CA 94303
`(650) 617-4000
`andrew.thomases@ropesgray.com
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`
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`Respectfully submitted by:
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` /J. Steven Baughman/
`J. Steven Baughman (lead coun-
`sel) - Reg. No. 47,414
`ROPES & GRAY, LLP
`2099 Pennsylvania Avenue, NW
`Washington, DC 20006-6807
`(202) 508-4606
`steven.baughman@ropesgray.com
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`
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`Attorneys For Patent Owner
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`CERTIFICATE OF SERVICE
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`Case IPR2016-01379
`Patent No. 6,197,696
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`The undersigned hereby certifies that a copy of the foregoing PATENT
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`OWNER’S SUR-REPLY has been served in its entirety by causing the aforemen-
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`tioned document to be electronically mailed, pursuant to Petitioner’s agreement
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`(Paper 2 at 82), to the following attorneys of record for the Petitioner listed below:
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`Petitioner’s Coun-
`sel of Record:
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`Darren M. Jiron, Darren.jiron@finnegan.com
`J. Preson Long, jp.long@ finnegan.com
`E. Robert Yoches, bob.yoches@ finnegan.com
`TSMC-IPB-PTAB@finnegan.com
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`Dated:
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`December 1, 2016
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`Respectfully submitted,
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`By:
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`/Ginny Blundell/
`Name: Ginny Blundell
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`ROPES & GRAY LLP
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`5
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