`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. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`TAIWAN SEMICONDUCTOR MANUFACTURING CO., LTD,
`Petitioner,
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`v.
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`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`IPR2017-018431
`Patent 7,893,501
`____________
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`
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`PATENT OWNER’S IDENTIFICATION OF IMPROPER NEW
`ARGUMENT IN PETITIONER’S REPLY
`PURSUANT TO JULY 20, 2018 ORDER (PAPER NO. 26)
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`
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`1 Case IPR2017-01844 has been consolidated with this proceeding．
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`1. Petitioner’s Reply and supporting papers (Reply, p. 2, l. 7 to p. 3, l. 2 and
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`Section II (i.e., p. 4, l. 1 to p. 6, l. 4); Ex. 1232, p. 4, l. 6 to p. 5, l. 3, and p. 5, l. 16
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`to p. 8, l. 6)) change Petitioner’s theory of unpatentability based on a new
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`argument that Misra’s spacers 23 are allegedly not formed of silicon nitride.
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`Compare Petition at 51-52 (arguing spacers 23 are formed when “silicon nitride is
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`deposited … to form silicon nitride spacers 23”); the testimony of Petitioner’s
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`expert submitted with the Petition (Ex. 1202 at ¶ 139 (“Misra discloses a sidewall
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`(spacer 23) … Silicon nitride is deposited and reactive ion etched to form silicon
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`nitride spacers 23.”); and the deposition testimony of Petitioner’s expert (Ex. 2210
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`at 287:21-288:4 (responding “I don’t think I did” when asked “Did you opine in
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`your declaration that a POSA would modify element 23 in Misra to be a material
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`other than silicon nitride?”), 374:23-375:12 (“Q: You testified that element 23 is
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`not a film. Is there any other reason that it would not satisfy [a silicon nitride film]
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`limitation?” “A: I’d have to give that some thought. I can’t answer on the spot
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`…”), and 375:13-376:12 (testifying that he opined that Misra’s element 23 was not
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`a silicon nitride film only because it was a spacer (allegedly not a film) and that it
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`was “not sensical to try and select other aspects of the phrase that it doesn’t fit”)).
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`2. Petitioner’s Reply and supporting papers (at the pages and line numbers
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`cited in #1) support the new argument identified in #1 with citation to a portion of
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`Misra (Ex. 1204 (6:54-58)) that is nowhere cited in the Petition and purports to
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`
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`1
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`
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`disclose that the spacers 23 can be formed of a material other than silicon nitride.
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`Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015)
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`(affirming the Board’s rejection of “[Petitioner’s] reliance, in its Reply
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`submissions, on previously unidentified portions of a prior-art reference to make a
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`meaningfully distinct contention.”).
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`Dated: July 24, 2018
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`
`
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`
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`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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`
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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
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`David.Cavanaugh@wilmerhale.com
`
`Dominic.Massa@wilmerhale.com
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`MichaelH.Smith@wilmerhale.com
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`
`
`
`
`Dominic E. Massa
`
`Michael H. Smith
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`
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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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`3
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