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`Paper No. __
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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 CO., LTD,
`Petitioner,
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`v.
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`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
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`IPR2017-018431
`Patent 7,893,501
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`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
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`1 Case IPR2017-01844 has been consolidated with this proceeding.
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`Patent Owner Godo Kaisha IP Bridge 1 (“Patent Owner”), by and through
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`their attorneys, respectfully requests oral argument, currently scheduled for
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`September 6, 2018. Patent Owner requests a total of 60 minutes to present its
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`arguments for IPR2017-01843.
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`The oral argument for IPR2017-01841 is also scheduled for September 6,
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`2018 and involves the same patent—U.S. Patent No. 7,893,501. In IPR2017-
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`01841, Patent Owner is also requesting a total of 60 minutes to present its
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`arguments. If the oral arguments are consolidated for IPR2017-01841 and
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`IPR2017-01843, Patent Owner still requests a total of 120 minutes to present its
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`arguments for both proceedings. Patent Owner requests this amount of time for
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`such a consolidated hearing because the prior art, disputed limitations, and issues
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`in IPR2017-01841 are different from those in IPR2017-01843.
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`Pursuant to 37 C.F.R § 42.70(a), and without intending to waive any issue
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`not specifically identified, Patent Owner identifies the following issues to be
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`1. The proper construction of “a silicon nitride film;”
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`2. Failure of Petitioner to meet its burden of proving obviousness of
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`claims 1, 4-5, 7, 9–11, 15–19, and 23–25 under 35 U.S.C. § 103(a) in
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`view of Misra over Tsai;
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`argued:
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`3. Failure of Petitioner to meet its burden of proving obviousness of
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`claims 6 and 21 under 35 U.S.C. § 103(a) in view of Misra, Tsai, and
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`Oda;
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`4. Failure of Petitioner to meet its burden of proving obviousness of
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`claims 12 and 13 under 35 U.S.C. § 103(a) in view of Misra, Tsai, and
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`Hokazono;
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`5. Exclusion of Petitioner’s improper new arguments in its Reply as
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`identified in Paper No. 27;
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`a. Petitioner’s improper new theory of unpatentability based on
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`the new argument that Misra’s spacers 23 are allegedly not
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`formed of silicon nitride.
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`b. Petitioner’s improper new argument citing a portion of Misra
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`that is nowhere cited in the Petition to support its improper new
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`argument described in 5.a.
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`6. Exclusion of certain portions of the July 25th deposition transcript of
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`Petitioner’s expert (Ex. 2232) as set forth in Patent Owner’s Motion to
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`Exclude Evidence;
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`7. Any issues specified by Petitioner in its request for Oral Argument;
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`8. Any motions or issues that remain pending at the time of the hearing;
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`9. Any other issues the Board deems necessary for issuing a final written
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`Respectfully submitted,
`Godo Kaisha IP Bridge 1
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`By /Joshua J. Miller /
`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
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`decision.
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`Dated: August 9, 2018
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. §42.6 (e)(4)
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`I certify that on August 9, 2018 I will cause a copy of the foregoing
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`document to be served via electronic mail, as previously consented to by
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`Petitioner, upon the following:
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`David L. Cavanaugh
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`David.Cavanaugh@wilmerhale.com
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`Dominic.Massa@wilmerhale.com
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`MichaelH.Smith@wilmerhale.com
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`Dominic E. Massa
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`Michael H. Smith
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`Date: August 9, 2018
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`/MacAulay Rush /
`MacAulay Rush
`Patent Paralegal
`WOLF GREENFIELD & SACKS, P.C.
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`5
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