`
`Filed on behalf of Patent Owner by:
`Gerald B. Hrycyszyn, Reg. No. 50,474
`Richard F. Giunta, Reg. No. 36,149
`Edmund J. Walsh, Reg. No. 32,950
`Joshua J. Miller (admitted pro hac vice)
`WOLF GREENFIELD & SACKS, P.C.
`600 Atlantic Ave., Boston, MA 02210-2206
`Tel: 617-646-8000/Fax: 617-646-8646
`
`
` Paper No. __
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING CO., LTD,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`IPR2017-018411
`Patent 7,893,501
`____________
`
`
`
`
`PATENT OWNER’S IDENTIFICATION OF IMPROPER NEW
`ARGUMENT IN PETITIONER’S REPLY
`PURSUANT TO JULY 20, 2018 ORDER (PAPER NO. 26)
`
`
`1 Case IPR2017-01842 has been consolidated with this proceeding．
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`1. Reply, p. 3 ll. 2-4; Ex. 1027, p. 4, ll. 2-3: Petitioner changed its theory of
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`unpatentability based on a new argument that it would have been obvious to
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`modify Igarashi’s Fifth Embodiment to add isolation regions in view of Igarashi’s
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`disclosure of isolation regions in its First Embodiment, which changes the
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`Petition’s argument that Igarashi discloses that its Fifth Embodiment already has
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`isolation regions. Pet. at 22 (“[T]he disclosure of the features in Igarashi common
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`to different illustrations are applicable to … Figure 12.”), 25-26 (similar).
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`2. Reply, p. 3, ll. 2-7, p. 14, l. 10, p. 26 ll. 4-7, p. 28, ll. 3-11; Ex. 1027, p. 4, ll. 2-3,
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`p. 21, ll. 6-9, p. 27, l. 4 to p. 28, l. 8, 29, ll.1-9: Petitioner changed its theory of
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`unpatentability based on a new argument that it would have been obvious to
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`modify Igarashi’s Fifth Embodiment to add isolation regions and form an active
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`region in view of Woerlee whereas the Petition relied on Woerlee only to teach
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`locating in the substrate the isolation/active regions allegedly taught by Igarashi.
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`Pet. at 27 (“To the extent that Igarashi does not explicitly disclose the location of
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`the ‘active element region’ … Woerlee discloses this limitation.”), id. at 31 (“By
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`locating Igarashi’s active [] region … according to … Woerlee.”)).
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`3. Reply, p. 14, ll. 1-3; Ex. 1027, p. 15, ll. 4-6: New argument that transistors
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`without isolation regions have an active region. Compare Pet. at 33 (“isolation
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`regions that define … the active regions are required in all transistor devices.”).
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`1
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`4. Reply, p. 19, l. 16 to p. 21, l. 3, p.10, l. 17 to p. 13, l. 5; Ex. 1027, ¶¶ 16-18, 29-
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`31: Argument that the entire area “between the two STI in Igarashi [modified Fig.
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`12]” meets the claimed “active region” is new, as the Petition and its supporting
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`expert declaration nowhere explain whether this area is alleged to include one or
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`two (one per transistor) active regions as confirmed by the contradictory and
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`ultimately non-comital testimony of Petitioner’s expert at deposition. E.g., Ex.
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`2009 at 91:12-92:14 (two active regions); Ex. 2010 at 400:16-401:11 (denying
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`prior testimony; identifying one active region); 406:5-408:9 (retracting testimony
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`for annotated Figure 12 (Ex. 2002 described at Ex. 2010 at 404:12-20; 192:21-22)
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`and requesting to strike testimony); 410:1-24 (“can’t answer”); 416:11-17 (not
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`relevant to understanding the claim); 424:2-11 (not needed to understand claim).
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`5. Reply, p. 20, l. 11, p. 21, l. 3; Ex. 1027, ¶ 31: Petitioner’s cursory and
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`conclusory “argument,” that the area “between the two STI in Igarashi [modified
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`Fig. 12]” includes multiple “active regions” (one per transistor) contradicts the new
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`argument in #4 and also is new, as the Petition and its supporting expert
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`declaration nowhere explained whether this area is alleged to include one or two
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`(one per transistor) active regions as confirmed by the contradictory and ultimately
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`non-comital testimony of Petitioner’s expert at deposition cited in #4.
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`Dated: July 24, 2018
`
`
`Respectfully submitted,
`
`By /Gerald B. Hrycyszyn /
`Gerald B. Hrycyszyn, Reg. No. 50,474
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`2
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. §42.6 (e)(4)
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`I certify that on July 24, 2018 I will cause a copy of the foregoing document,
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`including any exhibits referred to therein, to be served via electronic mail, as
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`previously consented to by Petitioner, upon the following:
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`
`
`David L. Cavanaugh
`
`David.Cavanaugh@wilmerhale.com
`
`Dominic.Massa@wilmerhale.com
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`MichaelH.Smith@wilmerhale.com
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`
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`
`
`Dominic E. Massa
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`Michael H. Smith
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`Date: July 24, 2018
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`/MacAulay Rush/
`MacAulay Rush
`Patent Paralegal
`WOLF GREENFIELD & SACKS, P.C.
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`
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`3
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`
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