In The Matter Of:
`Taiwan Semiconductor Manufacturing Co., Ltd. v.
`Godo Kaisha IP Bridge 1
`
`Hearing
`July 19, 2018
`
`68 Commercial Wharf • Boston, MA 02110
`888.825.3376 - 617.399.0130
`Global Coverage
`court-reporting.com
`
`Original File Trial 7-19-18.txt
`Min-U-Script® with Word Index
`IP Bridge Exhibit 2022
`TSMC v. Godo Kaisha IP Bridge 1
`IPR2017-01841
`
`
`Taiwan Semiconductor Manufacturing Co., Ltd. v.
`Godo Kaisha IP Bridge 1
`
`Hearing
`July 19, 2018
`
`68 Commercial Wharf • Boston, MA 02110
`888.825.3376 - 617.399.0130
`Global Coverage
`court-reporting.com
`
`Original File Trial 7-19-18.txt
`Min-U-Script® with Word Index
`IP Bridge Exhibit 2022
`TSMC v. Godo Kaisha IP Bridge 1
`IPR2017-01841
`
`
`
`1
`
`
` 1 VOLUME: I
`
` PAGES: 1-36
`
` 2
`
` 3 UNITED STATES PATENT AND TRADEMARK OFFICE
`
` 4 BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` 5 *********************************
` TAIWAN SEMICONDUCTOR
` 6 MANUFACTURING COMPANY, LTD.,
` Petitioner
` 7 vs.
` GODO KAISHA IP BRIDGE I,
` 8 Patent Owner
` *********************************
` 9
` Heard before:
`10 THE HONORABLE JENNIFER MEYER CHAGNON and
` THE HONORABLE MELISSA HAAPALA,
`11 Administrative Patent Judges
`
`12
`
`13
`
`14 Case IPR2017-01841
`
`15 Case IPR2017-01843
`
`16 Patent 7,893,501 B2
`
`17
`
`18
`
`19 TELEPHONIC HEARING
`
`20 July 19, 2018
`
`21 11:00 a.m.
`
`22
`
`23 ------- Megan M. Castro, RPR, Court Reporter -------
`
`24
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`2
`
`
` 1 APPEARANCES:
`
`
`
` 2 Heard Before THE HONORABLE JENNIFER MEYER CHAGNON
`
` 3 and THE HONORABLE MELISSA HAAPALA
`
` 4
`
` 5 Representing the Petitioner:
`
` 6 WILMER CUTLER PICKERING HALE and DORR, LLP
`
` 7 Michael H. Smith, Esquire
`
` 8 David Cavanaugh, Esquire
`
` 9 60 State Street
`
`10 Boston, Massachusetts 02109
`
`11 617-526-5000
`
`12 michaelh.smith@wilmerhale.com
`
`13 david.cavanaugh@wilmerhale.com
`
`14
`
`15 Representing the Patent Owner:
`
`16 WOLF, GREENFIELD & SACKS, P.C.
`
`17 Gerald B. Hrycyszyn, Esquire
`
`18 Joshua J. Miller, Esquire
`
`19 600 Atlantic Avenue
`
`20 Boston, Massachusetts 02210-2206
`
`21 617-646-8000
`
`22 ghrycyszyn@wolfgreenfield.com
`
`23 jmiller@wolfgreenfield.com
`
`24
`
`O'Brien & Levine Court Reporting Solutions
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`
`
`Hearing - July 19, 2018
`
`3
`
`
` 1 P R O C E E D I N G S
`
` 2 - - -
`
` 3 JUDGE CHAGNON: Good morning, everybody.
`
` 4 This is Judge Chagnon. I also have Judge Haapala
`
` 5 on the line with me today. This is the
`
` 6 conference call for IPR2017-01841 and 01843.
`
` 7 Do we have counsel for petitioner on the
`
` 8 line?
`
` 9 MR. SMITH: We do. This Michael Smith,
`
`10 backup counsel for petitioner, and with me is
`
`11 Dave Cavanaugh, lead counsel for petitioner.
`
`12 MR. CAVANAUGH: Good morning.
`
`13 JUDGE CHAGNON: Thank you.
`
`14 Do we have counsel for patent owner on
`
`15 the line as well?
`
`16 MR. HRYCYSZYN: Yes, Your Honor. This is
`
`17 Jerry Hrycyszyn of Wolf Greenfield for patent
`
`18 owner, and with me is Josh Miller.
`
`19 JUDGE CHAGNON: Did either party get a
`
`20 court reporter today for this call?
`
`21 MR. HRYCYSZYN: Yes, Your Honor, there is
`
`22 a court reporter on the line.
`
`23 JUDGE CHAGNON: Sorry. Was that
`
`24 Mr. Hrycyszyn speaking?
`
`O'Brien & Levine Court Reporting Solutions
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`Hearing - July 19, 2018
`
`4
`
`
` 1 MR. HRYCYSZYN: Yes.
`
` 2 JUDGE CHAGNON: Okay. Great.
`
` 3 I will just ask that, once you get the
`
` 4 transcript of the call, that you go ahead and
`
` 5 file that as an exhibit in both of the
`
` 6 proceedings, please.
`
` 7 MR. HRYCYSZYN: We will do that, Your
`
` 8 Honor.
`
` 9 JUDGE CHAGNON: Thank you.
`
`10 So patent owner requested this conference
`
`11 call today, so we will hear first from patent
`
`12 owner.
`
`13 MR. HRYCYSZYN: Your Honor --
`
`14 MR. SMITH: Just in terms of the
`
`15 procedure -- this is Michael Smith for
`
`16 petitioner -- for how we proceed, the patent
`
`17 owner has made four requests. We would ask that
`
`18 we address them one at a time, so the patent
`
`19 owner presents on their first request, and then
`
`20 we have an opportunity to respond. We think this
`
`21 will be the most efficient way to move through
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`22 the call and to make sure each is addressed on
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`23 the merits.
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`24 JUDGE CHAGNON: That is fine with me. Is
`
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`Hearing - July 19, 2018
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`5
`
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` 1 that okay with you, Mr. Hrycyszyn?
`
` 2 MR. HRYCYSZYN: Yes, Your Honor, that is
`
` 3 fine with us.
`
` 4 JUDGE CHAGNON: Okay. Great. Then
`
` 5 whichever order you want to address them in is
`
` 6 fine with me.
`
` 7 MR. HRYCYSZYN: Thank you, Your Honor.
`
` 8 So I will start with the 1843 IPR. With
`
` 9 respect to this IPR, patent owner seeks the
`
`10 Court's authorization to file a short, two-page
`
`11 paper identifying an improper new argument in
`
`12 petitioner's reply that changes the petitioner's
`
`13 theory of unpatentability, relying on a different
`
`14 argument in a different portion of the prior art
`
`15 reference not cited or relied upon in the
`
`16 petition.
`
`17 Your Honor, a key issue in this IPR is
`
`18 whether the gate electrode protrudes upwards from
`
`19 the surface level of the parts of silicon nitrite
`
`20 film located at both side surfaces of the gate
`
`21 electrode. The petition alleges that this
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`22 limitation is met by a prior reference called
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`23 Misra even though the sides of its gate are
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`24 completely covered in silicon nitride spacers.
`
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`Hearing - July 19, 2018
`
`6
`
`
` 1 The petition explicitly concedes that the spacers
`
` 2 are made of silicon nitride. You can see the
`
` 3 petition at 52 for that.
`
` 4 But for the first time in its reply,
`
` 5 petitioner argues that Misra allegedly discloses
`
` 6 that these spacers could be made of a material
`
` 7 other than silicon nitride, and the reply
`
` 8 supports this new assertion by citing a portion
`
` 9 of Misra nowhere cited in the petitioner
`
`10 declaration of petitioner's expert that was filed
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`11 with it.
`
`12 The petitioner in opening expert
`
`13 declaration never argued that Misra allegedly
`
`14 discloses that the spacers could be made of a
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`15 material other than silicon nitride, never argued
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`16 that it would have been obvious to use a material
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`17 other than silicon nitride, and never cited or
`
`18 discussed the portion of Misra petitioner relies
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`19 upon in this new argument. And that specific
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`20 cite is Misra column 6 at 54 to 58.
`
`21 Thus, the reply advances an entirely new
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`22 argument and theory of unpatentability that was
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`23 not in the petition and cannot be considered.
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`24 JUDGE CHAGNON: Counsel, let me stop you
`
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`Hearing - July 19, 2018
`
`7
`
`
` 1 for a second. Or maybe you were done?
`
` 2 MR. HRYCYSZYN: I was done, Your Honor.
`
` 3 JUDGE CHAGNON: Okay. We were getting a
`
` 4 little bit into the substance of it, but what I
`
` 5 am hearing your request is, in general, that you
`
` 6 allege that, basically, petitioner is presenting
`
` 7 a new or different theory in the reply and that
`
` 8 this is improper, and you would like to submit --
`
` 9 you said a short paper. Do you mean a list
`
`10 identifying the arguments? Or do you mean
`
`11 something more substantive than that?
`
`12 Specifically, what are you requesting?
`
`13 MR. HRYCYSZYN: So we are requesting a
`
`14 two-page identification of the material and just
`
`15 a short explanation as to how it is different
`
`16 from what was in the petition.
`
`17 JUDGE CHAGNON: Okay. Thank you.
`
`18 MR. HRYCYSZYN: We can do that my Monday,
`
`19 July 23rd.
`
`20 JUDGE CHAGNON: Mr. Smith, we will hear
`
`21 from you now on this point.
`
`22 MR. SMITH: Thank you, Your Honor.
`
`23 Just as a preliminary matter, we think
`
`24 that, largely, the issues that patent owner has
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`Hearing - July 19, 2018
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`8
`
`
` 1 raised stem from a misunderstanding of the nature
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` 2 of the reply. As the Board is well aware, the
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` 3 purpose of the reply is to respond to the patent
`
` 4 owner's response, and that is what we have done
`
` 5 throughout our reply.
`
` 6 Throughout the replies, we identify where
`
` 7 we are responding to the patent owner response
`
` 8 and then include that response. And moreover,
`
` 9 these -- the replies are grounded in the
`
`10 petition. And we think this is clear even from a
`
`11 casual review of the patent owner -- or of the
`
`12 petitioner's reply.
`
`13 Now with regard to the issues that patent
`
`14 owner has raised, this is really, in our view, an
`
`15 attempt by the patent owner to get a second bite
`
`16 at the apple. What we did in the reply was we --
`
`17 on the -- with regard to this allegedly new
`
`18 argument, we specifically identified where we put
`
`19 forward our showing in the petition, and we
`
`20 specifically identified the deficiencies in the
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`21 patent owner's response in our reply. So we feel
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`22 that our reply was directly responsive to what
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`23 was in the patent owner's response and is
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`24 therefore properly within the scope of the reply.
`
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`Hearing - July 19, 2018
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`9
`
`
` 1 And this does not change the prima facia case
`
` 2 that we have made, nor was it necessary to add.
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` 3 We also think that the relief requested
`
` 4 is unnecessary. The rules already provide for
`
` 5 the opportunity to depose Dr. Shanfield and to
`
` 6 submit observations on cross examination. So we
`
` 7 don't see anything here that would warrant giving
`
` 8 patent owner a second opportunity to address
`
` 9 arguments that they could have addressed in their
`
`10 patent owner response.
`
`11 JUDGE CHAGNON: Let me ask you this.
`
`12 First, I hear patent owner asking just
`
`13 to -- basically, to identify arguments and not
`
`14 necessarily to respond to them but just to point
`
`15 them out as new. But if we were to authorize
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`16 patent owner's request to submit the two-page
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`17 paper, would -- I assume this is true -- would
`
`18 petitioner want to file some sort of responsive
`
`19 paper identifying the arguments that were being
`
`20 responded to?
`
`21 MR. SMITH: We would, Your Honor.
`
`22 And if you were to authorize a filing, we
`
`23 would suggest -- we don't think a short paper is
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`24 appropriate, and we would be concerned that would
`
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`Hearing - July 19, 2018
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`10
`
`
` 1 lead to new arguments. So we would instead
`
` 2 suggest a chart where the patent owner would have
`
` 3 the opportunity to identify the pages that they
`
` 4 feel are raising new arguments, and petitioner
`
` 5 would ask to be able to submit a similar short
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` 6 chart identifying what those arguments were
`
` 7 responsive to. And this is a procedure that
`
` 8 panels have used in other cases.
`
` 9 MR. CAVANAUGH: This is Dave Cavanaugh.
`
`10 One of the things that, if Your Honors
`
`11 would find it helpful, we could work with patent
`
`12 owner to prepare a single chart on the left-hand
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`13 column with the patent owner's identification of
`
`14 what they perceive to be new argument and, on the
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`15 right-hand column, we could put in what it is
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`16 responsive to, either in the POR or where it is
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`17 grounded in the petition.
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`18 Petitioner have used this in other cases,
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`19 and we found it a helpful way to kind of get to
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`20 those issues efficiently and without any
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`21 additional argument.
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`22 JUDGE CHAGNON: Thank you for that
`
`23 suggestion.
`
`24 Patent owner, can I just hear from you on
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`Hearing - July 19, 2018
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`11
`
`
` 1 that suggestion and just get your thoughts?
`
` 2 MR. HRYCYSZYN: Thank you, Your Honor.
`
` 3 Again, this is Jerry Hrycyszyn.
`
` 4 So we could do this as a list where
`
` 5 patent owner identifies the new arguments, and
`
` 6 petitioner can identify where they allegedly
`
` 7 believe this new portion of the reference was
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` 8 cited and where these arguments were made. I
`
` 9 don't see any need whatsoever for them to add in
`
`10 some third column where we need to identify what
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`11 they believe this was responsive to.
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`12 Responsiveness does not give them the ability to
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`13 add new arguments and new theories of
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`14 unpatentability. We only need those two points
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`15 in this paper.
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`16 JUDGE CHAGNON: Well, I mean, the rules
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`17 allow petitioner to file arguments and evidence
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`18 responses to these arguments presented in the
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`19 patent owner response. So it is not necessarily
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`20 as black and white as you are making it out. But
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`21 we do find it helpful sometimes to get these kind
`
`22 of lists from the parties when we are making a
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`23 determination of whether it is an appropriate
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`24 argument for the reply or not.
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`Hearing - July 19, 2018
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`12
`
`
` 1 But am I hearing you say you would rather
`
` 2 file separate papers, or a joint paper would be
`
` 3 acceptable to you, or you don't have a
`
` 4 preference?
`
` 5 MR. HRYCYSZYN: Your Honor, we could have
`
` 6 a joint filing. We have no issue with that.
`
` 7 JUDGE CHAGNON: Okay. Great.
`
` 8 I would -- just as a general housekeeping
`
` 9 matter, I am going to hear from you all on all of
`
`10 these issues today, and then we will issue an
`
`11 order, probably tomorrow, kind of giving you our
`
`12 decision on these.
`
`13 So does anybody else have anything else
`
`14 to say on this particular point in the 1843 case?
`
`15 I guess, timing-wise, if we decide to authorize a
`
`16 joint paper, you would need longer than Monday,
`
`17 and we definitely will take that into account.
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`18 MR. HRYCYSZYN: Thank you, Your Honor.
`
`19 MR. SMITH: Thank you, Your Honor.
`
`20 JUDGE CHAGNON: Okay. So if nobody has
`
`21 anything on the 1843 case, we can move on to the
`
`22 1841 case.
`
`23 The first point is fairly similar. I
`
`24 mean, I assume that the substance will be
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`Hearing - July 19, 2018
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`13
`
`
` 1 different, but we don't need to get into that
`
` 2 today on the call, necessarily.
`
` 3 Are there any other different issues
`
` 4 relating to the request for a new argument in the
`
` 5 reply, a paper identifying those in the 1841 case
`
` 6 that we haven't discussed with respect to the
`
` 7 1843 case?
`
` 8 We will hear from patent owner on that
`
` 9 first.
`
`10 MR. HRYCYSZYN: No, Your Honor. The
`
`11 issues are similar. We are -- patent owner is
`
`12 seeking to file a short paper, which we can do in
`
`13 the same format as a joint filing as we just
`
`14 discussed for the 1843 IPR.
`
`15 We can discuss these new arguments in
`
`16 detail if Your Honor required. But in summary,
`
`17 these are new arguments petitioner offers in its
`
`18 reply that change the theory of how the prior art
`
`19 meets the claims. For example, the petitioner
`
`20 switching from an argument that the prior art
`
`21 discloses a limitation to an argument that it
`
`22 would have been obvious to modify the prior art
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`23 to meet a limitation.
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`24 JUDGE CHAGNON: Counsel, we don't need to
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`Hearing - July 19, 2018
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`14
`
`
` 1 hear the specifics. If we authorize the paper,
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` 2 you can put those in there. But just as far as
`
` 3 the procedure and what you are requesting in the
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` 4 1841 case.
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` 5 MR. HRYCYSZYN: That is right, Your
`
` 6 Honor. So we would ask for the short paper like
`
` 7 in the 1843 IPR, and we could do that as a joint
`
` 8 filing.
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` 9 JUDGE CHAGNON: And petitioner, did you
`
`10 have any other different response to that request
`
`11 in this case than in the other case?
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`12 MR. SMITH: Just, as we had indicated in
`
`13 the other case, we think, if the Board is going
`
`14 to authorize a short filing, that it should be in
`
`15 the form of a chart that just simply identifies
`
`16 what patent owner believes are new arguments and
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`17 gives us an opportunity to respond with what they
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`18 are responsive to and, where appropriate, where
`
`19 they were grounded in the petition.
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`20 JUDGE CHAGNON: All right. Great. Thank
`
`21 you. I think we have everything we need on that
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`22 point.
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`23 So then we can just move on then. I
`
`24 guess we will go in order of what is in your
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`Hearing - July 19, 2018
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`15
`
`
` 1 email.
`
` 2 Patent owner, can we hear from you on
`
` 3 your request for a limited sur-reply?
`
` 4 MR. HRYCYSZYN: Yes, Your Honor. So
`
` 5 patent owner is requesting a short sur-reply and
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` 6 supporting expert declaration, no more than three
`
` 7 pages each, to address petitioner's new exhibits,
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` 8 1025 and 1026, and the expert reply testimony
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` 9 relating to them.
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`10 With this reply, petitioner introduced
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`11 two new references to support claim construction
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`12 position. These references were not cited in the
`
`13 petition or the opening expert declaration.
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`14 Petitioner did not even introduce them during the
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`15 patent owner's expert deposition.
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`16 So patent owner's expert has reviewed
`
`17 these two references and disagrees with
`
`18 petitioner's characterization of these
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`19 references. So patent owner would like to get an
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`20 opportunity to put in some evidence and respond
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`21 to these new pieces of evidence.
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`22 And patent owner can do that next week,
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`23 so we can provide a three-page sur-reply and up
`
`24 to three-page expert declaration. We don't think
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`Hearing - July 19, 2018
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`16
`
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` 1 that this would affect any other deadline in the
`
` 2 case.
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` 3 JUDGE CHAGNON: Thank you. We will hear
`
` 4 from petitioner on this point.
`
` 5 MR. SMITH: Thank you. This is Michael
`
` 6 Smith for petitioner.
`
` 7 We don't think this paper is necessary or
`
` 8 appropriate. Filing new exhibits in response to
`
` 9 arguments raised in the patent owner's response
`
`10 is routine. The rules already provide the patent
`
`11 owner an opportunity to cross examine
`
`12 Dr. Shanfield on these exhibits and his testimony
`
`13 and to submit observations on cross.
`
`14 So we think that that is what is provided
`
`15 for in the rules and it is sufficient here, and
`
`16 there is nothing that patent owner had pointed to
`
`17 that would justify deviating from those rules.
`
`18 Again, we think this is just the patent owner
`
`19 trying to get a second bite at the apple for
`
`20 points that could have been raised in their
`
`21 patent owner response.
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`22 And then in terms of the request that the
`
`23 patent owners made, again, we think that is
`
`24 unnecessary here. If the Board were to consider
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`Hearing - July 19, 2018
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`17
`
`
` 1 that, we would, of course, want the opportunity
`
` 2 to depose patent owner's expert on his sur-reply
`
` 3 declaration.
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` 4 And because the petitioner bears the
`
` 5 burden and because the rules in these procedures
`
` 6 are intended for the petitioner to have the last
`
` 7 word because they bear the burden, we would also
`
` 8 ask that we have an opportunity to submit a
`
` 9 similar reply to their sur-reply supported by our
`
`10 own declaration.
`
`11 But again, we think all of that is
`
`12 unnecessary because the patent owner has the
`
`13 opportunity to depose Dr. Shanfield and is
`
`14 planning to do that and to submit observations on
`
`15 cross examination.
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`16 JUDGE CHAGNON: Thank you.
`
`17 Patent owner, can you address
`
`18 petitioner's point that the standard rules --
`
`19 there is not really any reason necessarily to
`
`20 change from that normal procedure in this case?
`
`21 Could you let me know your arguments on that, of
`
`22 why we should allow this extra briefing in this
`
`23 case?
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`24 MR. HRYCYSZYN: Yes, Your Honor.
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`Hearing - July 19, 2018
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`18
`
`
` 1 So these -- I mean, we presume petitioner
`
` 2 had these references when they deposed Lou and
`
` 3 they could -- our expert, patent owner's expert,
`
` 4 but they didn't offer it to him. So we never got
`
` 5 an opportunity to have an expert, our expert,
`
` 6 opine on why these references are incorrect and
`
` 7 their characterizations of them are incorrect.
`
` 8 We don't believe that observations on
`
` 9 cross are sufficient to do that, especially once
`
`10 we get to the next topic, which is, their expert
`
`11 will refuse to answer direct questions on a
`
`12 topic, and that will be the subject of the next
`
`13 request, which is a motion to strike.
`
`14 So we believe that we should just be
`
`15 given an opportunity to point out why their
`
`16 characterizations are wrong and have expert
`
`17 testimony on that. We can do that quickly next
`
`18 week. They can depose our expert, if they feel
`
`19 that they need to, the following week. We don't
`
`20 see that that would affect the schedule at all.
`
`21 And the Board has allowed for sur-replies
`
`22 for these sorts of matters in the past, and we
`
`23 believe it is appropriate here, Your Honor.
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`24 JUDGE CHAGNON: And just to clarify -- I
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`Hearing - July 19, 2018
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`19
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` 1 think it is listed in your email. But the
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` 2 subject matter of this all would be related to
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` 3 claim construction; yes?
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` 4 MR. HRYCYSZYN: Yes, Your Honor. So
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` 5 these were submitted -- these two new references
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` 6 were submitted on claim construction on a
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` 7 position they didn't take. So it is also new
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` 8 argument and it is the subject of the two-pager
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` 9 that we will provide.
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`10 So these are new arguments they are
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`11 making that they didn't make in their petition
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`12 and their new references to support it.
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`13 JUDGE CHAGNON: Let me ask you a question
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`14 about that.
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`15 So if we were, for example, to authorize
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`16 a sur-reply, as you are requesting, would you
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`17 also still need the short paper in this case, or
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`18 are those mutually exclusive requests?
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`19 MR. HRYCYSZYN: Sorry. Which short paper
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`20 are you --
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`21 JUDGE CHAGNON: So the first point on
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`22 this case was the short paper identifying new
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`23 arguments. You just mentioned that this claim
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`24 construction issue is kind of the subject of that
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`Hearing - July 19, 2018
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` 1 list of new arguments as well. If we were to
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` 2 authorize a sur-reply, would you also still need
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` 3 the short paper, or would this handle that
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` 4 situation?
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` 5 MR. HRYCYSZYN: Your Honor, we would
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` 6 still need the short paper because there is four
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` 7 other --
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` 8 JUDGE CHAGNON: Okay.
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` 9 MR. HRYCYSZYN: -- new arguments that
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`10 petitioner made that would be the subject of that
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`11 two-pager joint submission.
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`12 JUDGE CHAGNON: Okay. Thank you.
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`13 Petitioner, did you have any final words
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`14 on the sur-reply issue?
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`15 MR. SMITH: Yes. Just without getting
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`16 too much into the details, I just wanted to
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`17 address what we feel is a mischaracterization,
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`18 that patent owner says that, with regard to
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`19 claims construction, that these exhibits are
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`20 raising new arguments, and that is just not the
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`21 case.
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`22 What happened here is that the petitioner
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`23 filed a petition, and the POPR that patent owner
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`24 made offered what we felt was an unreasonably or
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`Hearing - July 19, 2018
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` 1 unduly narrow construction and one that was
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` 2 unforeseeable to us because it directly
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` 3 contradicts the district court infringement
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` 4 allegation that they made. The Board and SBI did
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` 5 not accept this construction.
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` 6 The patent owner is now making that same
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` 7 argument in its patent owner response. So in
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` 8 response to that argument that they have raised,
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` 9 we have put in exhibits that further highlight
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`10 how their construction is inconsistent with the
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`11 way that the term is used and understood in the
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`12 art. So this is in no way a new argument. This
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`13 is directly responsive to the arguments produced
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`14 in the patent owner's response.
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`15 MR. HRYCYSZYN: Your Honor, if I could
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`16 just respond on one point. Under SAS Magnum
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`17 Oil, patent owner needs to have a chance
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`18 to respond to evidence. And that is all we are
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`19 asking for an opportunity to do. I am happy to
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`20 delve into the merits of the issue, but I
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`21 disagree with the characterization that was just
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`22 made about the disclosure in the petition.
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`23 JUDGE CHAGNON: Okay. Thank you.
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`24 We will take all of this under advisement
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`Hearing - July 19, 2018
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`22
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` 1 and, like I said, we will issue an order letting
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` 2 you all know about these different requested
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` 3 briefings in the next day or so.
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` 4 Does anybody else have anything on the
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` 5 sur-reply issue? If not, we can move on to the
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` 6 final topic on the email list.
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` 7 MR. HRYCYSZYN: No, Your Honor, for
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` 8 patent owner.
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` 9 MR. SMITH: Nothing for petitioner.
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`10 JUDGE CHAGNON: Okay. Great.
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`11 Then, patent owner, we will hear from you
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`12 on your requested motion to strike.
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`13 MR. HRYCYSZYN: Thank you, Your Honor.
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`14 So in this last issue, we have a
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`15 situation where we took a deposition of
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`16 petitioner's expert. We were asking key
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`17 questions -- or, asking questions about a key
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`18 claim construction issue and how petitioner and
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`19 its expert were reading the asserted prior art
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`20 onto that particular limitation.
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`21 And the petitioner's expert took varying
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`22 positions from, first, initially -- and this is
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`23 about the active region and whether or not a
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`24 particular MISFET included an active region.
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`Hearing - July 19, 2018
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` 1 First, the petitioner refused to take a
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` 2 position. Then, he alleged that there was one
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` 3 active region in this particular prior art
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` 4 reference.
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` 5 That was -- let's see -- then he switched
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` 6 to there being two active regions. And then he
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` 7 said he never opined on this and wasn't prepared
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` 8 to do it. Then finally, he said that this wasn't
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` 9 necessary to do and it was irrelevant.
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`10 So we have an expert who didn't provide a
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`11 position on something in his opening expert
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`12 report, refused to answer questions about it at
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`13 his deposition, and then all of a sudden comes in
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`14 in a reply and says: Well, here I finally
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`15 reached my conclusion on this, and here it is.
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`16 We think that there is a single active region in
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`17 this particular prior art reference.
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`18 We think that is improper and
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`19 inappropriate and it is the equivalent of an
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`20 expert not showing up for a series of questions
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`21 on a deposition. And it is somewhat similar to a
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`22 case, HTC Corporation versus NSC Technology that
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`23 is IPR2014-1198, paper 41, in which case a
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`24 declaration was excluded because the witness
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`Hearing - July 19, 2018
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`24
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` 1 refused to show up for a deposition.
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` 2 Here, it is similar. This is the
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` 3 equivalent of their expert not showing up for a
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` 4 deposition on this question. So he wouldn't be
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` 5 allowed to come in now on a reply and offer an
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` 6 opinion on the issue.
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` 7 JUDGE CHAGNON: Counsel, let me ask you a
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` 8 couple of questions on this.
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` 9 First, is this the same issue that you
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`10 are asking to address in a potential sur-reply?
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`11 MR. HRYCYSZYN: No. It is a different
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`12 issue, Your Honor. So the issue with the
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`13 sur-reply has to do with two references and what
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`14 they disclose. This has to do with the expert's
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`15 testimony and how they are reading a particular
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`16 reference and how they are reading it onto the
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`17 claims. So it is different.
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`18 JUDGE CHAGNON: Okay. Thank you.
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`19 And then also, just another question, so
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`20 I know that you have a deposition scheduled with
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`21 this expert, I believe, for next week. So why
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`22 couldn't you just ask him these questions in this
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`23 later deposition or address these points and then
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`24 cite to that testimony if it is something you
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`O'Brien & Levine Court Reporting Solutions
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`Hearing - July 19, 2018
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`25
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` 1 want to cite to in your observations? Why do we
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` 2 need a separate motion to strike? It seems like
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` 3 you still have an opportunity to address it in
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` 4 this later deposition.
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` 5 MR. HRYCYSZYN: Your Honor, we believe
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` 6 that these are new arguments. So the same things
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` 7 we asked the witness questions of at his
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` 8 deposition were things that were not in the
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` 9 opening expert report and they weren't in the
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`10 petition. So it is new argument. And this new
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`11 argument is now coming in in a reply.
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`12 So if Your Honors are not going to permit
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`13 us the right to file a motion to strike, we would
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`14 just want it to be considered new argument, and
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`15 it would fall within our two-pager that was also
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`16 requested. We don't believe that observations on
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`17 cross are the appropriate place to identify new
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`18 arguments. I mean, we can get testimony from
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`19
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