`Filed By: David L. Cavanaugh, Reg. No. 36,476
`Dominic E. Massa, Reg. No. 44,905
`Michael H. Smith, Reg. No. 71,190
`1875 Pennsylvania Ave. NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Email: David.Cavanaugh@wilmerhale.com
`Dominic.Massa@wilmerhale.com
`MichaelH.Smith@wilmerhale.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
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`
`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.
`
`Case IPR2017-018411
`
`
`PETITIONER’S RESPONSE PURSUANT TO JULY 20, 2018 ORDER
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`
`1 Case IPR2017-01842 has been consolidated with this proceeding.
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`
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`1. The Reply specifically identifies where and how the Patent Owner Response
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`(“POR”) mischaracterizes the Petition (“Pet.”) (e.g., POR at 37), identifies where
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`the Pet. showed that it would have been obvious to form Igarashi’s active region in
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`the substrate 1 in Fig. 12 (e.g., Pet. at 32; see also id. at 31), and notes where the
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`Board recognized this in the DI (e.g., DI at 16). The Reply specifically states at
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`2:9-13 that this section responds to the POR at 37.
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`2. The Reply simply identifies where and how the POR mischaracterizes the Pet.
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`(e.g., POR at 58), identifies where the Pet. showed that it would have been obvious
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`to use Igarashi’s STI to define the active region of substrate 1 in Fig. 12 (e.g., Pet.
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`at 32; see also id. at 31), and notes where the Board recognized this in the DI (e.g.,
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`DI at 16). A review of pages 2-3, 13-14, and 25-28 of the Reply, which quote
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`extensively from the Pet., POR, and DI, confirms that the Reply properly responds
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`to the POR and is grounded in the Pet. The Reply specifically states at 26:10 to
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`27:1 that this section responds to the POR at 58.
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`3. Page 14 of the Reply responds to the PO’s suggestion that some older devices
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`did not have active regions because they did not use STI (POR at 46) and explains
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`why this example is misleading. The Reply states at 13:6-9 that this section
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`responds to ¶¶112-113 of Dr. Glew’s decl., cited on page 46 of the POR.
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`4. The Reply at 9-13 and 19-22 responds to the arguments in the POR on pages
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`14-21, 28-29, 33-36, and 58-74 that Igarashi’s Fig. 12 embodiment does not have a
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`1
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`
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`U.S. Patent 7,893,501
`IPR2017-01841
`Petitioner’s Response Pursuant to July 20, 2018 Order
`
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`single large active region or two smaller active regions that satisfy the claims. In
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`response, the Reply confirms that a POSITA would have viewed the region
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`between the two STI as the claimed active region and identifies where this is
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`shown in the Pet. Reply at 19-20 (citing Pet. at 25-26). The Reply also confirms
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`in response to the POR that Igarashi discloses the claimed active region under
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`either view and that PO’s construction is unduly narrow. Reply at 9-13, 20-22.
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`The Reply specifically states at 9:1-4 and 21:4-22:2 that these arguments respond
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`to POR at 17-18, 33-34, 28-29, and 74. The Reply also responds to PO’s
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`mischaracterization of Dr. Shanfield’s testimony. Reply at 22-25; see also Ex.
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`2009 at 93:16-20 (clarifying region between STI is an active region, not two active
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`regions); Ex. 2010 at 401:9-402:4 (confirming clarification); id. at 408:10-17,
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`411:7-412:3 (confirming region between STI is the active region); id. at 429:12-
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`430:5, 437:11-19 (attempting to clarify and answer confusing questions).
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`5. As noted for 4., the Reply at 20-21 responds the POR’s arguments that Igarashi
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`does not have a single large active region or two smaller active regions that satisfy
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`the claims and confirms Igarashi discloses the active region under either view.
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`Dated: July 27, 2018 Respectfully Submitted,
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`/Michael Smith/
`_______________________________
`Michael H. Smith, Reg. No. 71,190
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`2
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`CERTIFICATE OF SERVICE
`I hereby certify that, on July 27, 2018, I caused a true and correct copy of the
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`foregoing materials:
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` Petitioner’s Response Pursuant to July 20, 2018 Order
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`to be served via email on the following counsel of record as listed in Patent
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`Owner’s Mandatory Notices:
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`Gerald B. Hrycyszyn, Registration No. 50,474
`GHrycyszyn-PTAB@wolfgreenfield.com
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`Richard F. Giunta, Registration No. 36,149
`RGiunta-PTAB@wolfgreenfield.com
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`Edmund J. Walsh, Registration No. 32,950
`EWalsh-PTAB@wolfgreenfield.com
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`Joshua Miller, pro hac vice
`Joshua.Miller@WolfGreenfield.com
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`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue
`Boston, Ma 02210
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`Respectfully Submitted,
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`___/Michael Smith/_____________
`Michael H. Smith
`Registration No. 71,190
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