`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
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY LTD.
`Petitioner
`
`v.
`
`GODO KAISHA IP BRIDGE 1
`Patent Owner.
`
`Case IPR2017-018431
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE
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`
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` 1
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` Case IPR2017-01844 has been consolidated with this proceeding.
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`
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`
`Introduction
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`Patent Owner moves to exclude admissible evidence from the Board’s
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`I.
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`consideration to create an incomplete record and to avoid the merits. The Board
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`can review the full record and appropriately weight the evidence and should deny
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`Patent Owner’s motion.
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`Specifically, Patent Owner moves to exclude portions of Dr. Shanfield’s
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`testimony during the re-direct and re-cross related to undisputed issues because Dr.
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`Shanfield was allegedly coached. He was not. Dr. Shanfield gave consistent
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`technical testimony throughout the deposition. After a series of misleading
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`questions on cross, Petitioner’s counsel conducted a routine re-direct. When Dr.
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`Shanfield offered testimony on re-cross based on a misstatement of the law,
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`Petitioner’s counsel represented to Dr. Shanfield what the law was, and Dr.
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`Shanfield promptly confirmed his original technical testimony, which he had
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`offered before any alleged coaching.
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`Even Patent Owner appears to agree the Board should review the full record.
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`Patent Owner’s motion for observations asks the Board to consider the exact same
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`testimony it seeks to exclude in this motion. This further highlights the improper
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`nature of Patent Owner’s motion to exclude. Office Trial Practice Guide, 77 Fed.
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`Reg. 48756, 48767-68 (Aug. 14, 2012) (“In the event that cross-examination
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`occurs after a party has filed its last substantive paper on an issue, such cross-
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`1
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`examination may result in testimony that should be called to the Board’s attention,
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`but the party does not believe a motion to exclude the testimony is warranted.”)
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`The Board should review and weigh the evidence with the benefit of the full
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`record. Patent Owner’s Motion to Exclude should be denied.
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`II. Dr. Shanfield’s Deposition Testimony is Proper and Admissible
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`Patent Owner seeks to exclude portions of Dr. Shanfield’s deposition
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`transcript at Ex. 2232 at 144:1-12, 145:1-147:8, 167:14-173:3, and 173:10-178:4.
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`Patent Owner alleges wrongly that Dr. Shanfield was coached and seeks to exclude
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`his re-direct testimony and his testimony during its own re-cross. Patent Owner’s
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`motion should be rejected because it is premised on a mischaracterization of the
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`record. While Petitioner believes the record speaks for itself and the Board can
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`appropriately weigh the evidence, Petitioner nonetheless responds here to address
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`Patent Owner’s mischaracterization of the deposition.
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`Dr. Shanfield offered consistent technical testimony throughout the
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`deposition. Ex. 2232 [Shanfield Reply Tr.], 51:22-52:2; id., 30:4-6; id. 52:21-53:6.
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`To provide a clear record for the Board, Petitioner asked Dr. Shanfield routine re-
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`direct questions to clarify his responses to unclear questioning during cross. E.g.,
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`Ex. 2232 [Shanfield Reply Tr.], 143:10-21 (“Q. Do you also recall discussing
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`embodiments in the specification of the ’501 patent that includes stress films? A.
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`Yes, I do. Q. Could you please look at Claim 1 of the ’501 patent. A. Yes. Q.
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`2
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`Does Claim 1 recite any stress limitations? A. No.”) On re-cross, after a long day
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`of deposition, Dr. Shanfield confused how the requirements of dependent claims
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`relate to independent claims and offered testimony that was clearly based on that
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`misunderstanding. Ex. 2232 [Shanfield Reply Tr.], 159:5-160:23. To provide a
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`clear record, counsel for Petitioner provided a representation to Dr. Shanfield on
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`the record regarding how as a legal matter dependent claims relate to independent
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`claims, so that Dr. Shanfield could provide his technical testimony based on that
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`legal understanding. Ex. 2232 [Shanfield Reply Tr.], 167:14-18. Dr. Shanfield
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`then confirmed his initial testimony during cross – before any alleged coaching –
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`was correct. On re-cross, Counsel for Patent Owner tried desperately to get Dr.
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`Shanfield to admit he had changed his technical testimony, knowing full well that
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`he had not. Ex. 2232 [Shanfield Reply Tr.], 174:12-23; see also id. 175:2-15.
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`Having failed to create a misleading record during the deposition, Patent Owner
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`now seeks to exclude Dr. Shanfield’s confirmation that his initial testimony during
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`cross (before any alleged coaching) was correct.
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`The Board should reject Patent Owner’s attempt to create an incomplete and
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`misleading record. Even Patent Owner appears to agree this testimony is
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`admissible. For purposes of its Observations on Cross, it asks the Board to
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`consider the exact same testimony it seeks to exclude in this motion. Compare
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`Patent Owner’s Observations on Cross (Paper 30), Observation #12 (asking the
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`3
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`Board to consider testimony at 144:1-12, 145:1-147:8), Observation #11 (asking
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`the Board to consider testimony at 167:14-173:3, and 173:10-178:4) with Mot.
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`(seeking to exclude the exact same testimony). This further illustrates why the
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`Board should consider the full record. While Petitioner does not rely on the
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`testimony Patent Owner seeks to exclude for its affirmative case, this testimony
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`illustrates how the Patent Owner’s seeks to mischaracterize the record and should
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`be considered by the Board.
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`A. Dr. Shanfield’s consistent Testimony During Cross-Examination
`Patent Owner argues that Dr. Shanfield testified during cross-examination
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`
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`that claim 1 requires stress. To the contrary, Dr. Shanfield consistently testified –
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`before any alleged coaching – that claim 1 does not require stress. Ex. 2232
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`[Shanfield Reply Tr.], 51:22-52:2 (“Q. Does that language require that the silicon
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`nitride film apply stress? A. No. The claim language doesn’t require stress.”); id.,
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`30:4-6; id. 52:21-53:6. This testimony is consistent with Dr. Shanfield’s testimony
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`in his initial declaration that the challenged claims do not require stress, where he
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`explains that none of the challenged claims recite stress limitations and that the
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`stress limitations appear in only the unchallenged dependent claims. Ex. 1202
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`4
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`[Shanfield Decl.], ¶49 n. 3.2 Patent Owner never disputed this and confirms in its
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`Motion to Exclude that it agrees the challenged claims do not require stress. Mot.,
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`5 (“To be clear, Patent Owner does not [assert] … claim 1 requires that the silicon
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`nitride film induce stress.”); Patent Owner’s Observations on Cross (Paper 34),
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`Observation #10 (same).
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`Patent Owner ignores this testimony entirely. Instead, Patent Owner cites a
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`series of questions it asked Dr. Shanfield about an embodiment in the specification.
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`Mot., 5, citing Ex. [Shanfield Reply Tr.], 56:17-58:2. The immediately preceding
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`testimony shows Dr. Shanfield is discussing an exemplary embodiment, not what
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`is required by the claims. Ex. 2232 [Shanfield Reply Tr.], 56:4-16 (“Q. So in the
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`context of the '501 patent, can a silicon nitride film, which is called out in the last
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`limitation of Claim 1, be made out of multiple layers if those layers deliver only
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` 2
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` Dr. Shanfield has testified consistently that his own opinions are reflected in his
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`declarations and that he spent at least on the order of 100 hours on his initial
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`declarations alone. Ex. 2209, 9:10-16, 10:2-8, 11:6-23. Any similarities between
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`Dr. Shanfield’s declaration in this proceeding and the Petition is simply due to the
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`Petition adopting and presenting his analysis. Patent Owner’s suggestions to the
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`contrary are without merit.
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`5
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`negligible stress? A. There's nothing in the claim language that prohibits it. The
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`context of the '501 patent though is referring to silicon nitride that will create a
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`stress field in the substrate as a whole. So in the literal sense, the claim language
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`doesn't prohibit the theoretical zero stress film. But what's being referred to is a
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`stress-inducing film.”).
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`Thus, Dr. Shanfield’s consistently testified before any alleged coaching that
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`the claims do not require stress, as he had testified in his initial declaration and as
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`the parties agree.
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`B.
`Petitioner’s Routine Re-Direct Did Not Coach Dr. Shanfield
`Although Dr. Shanfield testified consistently that the claims do not require
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`
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`stress, Petitioner believed – rightly – that Patent Owner might try to use the
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`testimony it obtained at 56:17-58:2, based on unclear questions, to imply that Dr.
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`Shanfield otherwise. To provide a clear record, Petitioner asked Dr. Shanfield a
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`series of open-ended questions to confirm which claims require stress (three
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`unchallenged dependent claims) and which claims do not (the challenged claims).
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`Ex. 2232 [Shanfield Reply Tr.], 143:10-144:7. Dr. Shanfield offered the same
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`testimony he offered in his initial declaration, namely, that the challenged claims to
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`not require stress. Ex. 2232 [Shanfield Reply Tr.], 144:9-12.
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`Petitioner’s re-direct did not coach or otherwise suggest the answer Dr.
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`Shanfield should give. In fact, to avoid even a hint of coaching, Petitioner’s
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`6
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`counsel walked through the claims themselves with Dr. Shanfield, rather than
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`pointing him to his testimony in his initial declaration.
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`Petitioner believes the Board can properly weigh the evidence and evaluate
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`the full record. Patent Owner’s efforts to exclude the re-direct would create a less
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`clear record and should be rejected.
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`C.
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`Patent Owner’s Counsel Recognized It Had Obtained Testimony
`Based on a Misstatement of the Law and Sought to Capitalize on
`It
`Patent Owner argues that during re-cross Dr. Shanfield returned to his
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`
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`opinion on cross and that this opinion was that the claims require stress. Mot., 8.
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`This argument is not supported by the record. As discussed above, Dr. Shanfield
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`repeatedly confirmed on cross – before any alleged coaching – that the claims do
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`not require any stress. Supra at II.A-B, citing Ex. 2232 [Shanfield Reply Tr.],
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`51:22-52:2; id., 30:4-6, 52:21-53:6, 143:10-144:12.
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`Rather, what occurred during re-cross is that after a long deposition, Dr.
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`Shanfield, a technical expert, made a misstatement of law. Ex. 2232 [Shanfield
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`Reply Tr.], 159:21-160:4. At the start of re-cross, Dr. Shanfield testified – as he
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`had throughout the deposition – that the challenged claims do not require stress:
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`“Q. So there's no requirement in Claim 1 of the ’501 patent that the silicon nitride
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`film induce stress; is that correct? A. Claim language doesn't prohibit a zero
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`stress film. That's correct.” Ex. 2232 [Shanfield Reply Tr.], 159:5-9. Not
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`7
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`satisfied, Patent Owner’s counsel repeatedly tried to get Dr. Shanfield to change
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`his testimony by telling him “That’s not my question,” “This isn't the question,”
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`and telling him to answer “without looking at the claim language.” Id., 159:10-18.
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`At this point, Dr. Shanfield became confused by Patent Owner’s counsel’s
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`questioning and mixed up how the requirements of dependent claims relate to
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`independent claims. Id., 159:21-160:4. Patent Owner’s counsel seized upon the
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`opportunity to take advantage of this misunderstanding, which Patent Owner’s
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`counsel even acknowledged. Id., 160:5 (“Perhaps you’re confused.”) Thereafter,
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`Patent Owner’s counsel did everything possible to prevent Dr. Shanfield from
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`clarifying his testimony, going as far as attempting to stop the deposition with a
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`question pending. Id., 168:5-11.
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`D.
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`Petitioner Properly Clarified the Law for Dr. Shanfield to Create
`a Clear Record of Dr. Shanfield’s Technical Testimony
`Given Dr. Shanfield’s apparent testimony based on a legal
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`misunderstanding, Petitioner’s counsel clarified the law for Dr. Shenfield by
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`providing a simple, non-leading legal representation: “Q. I'm going to represent to
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`you that as a legal matter, a dependent claim recites additional limitations that are
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`not present in the independent claim from which it depends. Do you have that
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`understanding in mind?” Ex. 2232 [Shanfield Reply Tr.], 167:14-18. Petitioner’s
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`counsel then gave Dr. Shanfield an opportunity to clarify his testimony, if he
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`8
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`desired, and Dr. Shanfield confirmed that as a technical matter, claim 1 does not
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`require stress, just as he had testified before any alleged coaching: “Q. And with
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`the understanding that we discussed earlier, is there anything you would like to
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`clarify with your testimony regarding whether Claim 1 requires silicon nitride film
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`to induce stress? Yes. Now that I understand – … [interruption by Patent Owner’s
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`counsel] Yes. I do want to clarify. Now that I understand the legal issue, Claim 1
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`does not require that -- it does not have any language in it that requires the film to
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`have stress, as I said before. And what that means legally is that it's not required in
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`meeting the limitations of Claim 1.” Ex. 2232 [Shanfield Reply Tr.], 171:16-
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`172:14.
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`On Patent Owner’s second re-cross (which Patent Owner also seeks to
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`exclude), Dr. Shanfield confirmed repeatedly that he was simply “mistaken about
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`the legal implications” when answering Patent Owner’s questions on re-cross. Ex.
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`2232 [Shanfield Reply Tr.], 174:12-23; see also id. 175:2-15, 176:4-24, 177:11-19.
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`Having failed to prevent Dr. Shanfield from clarifying his testimony, Patent
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`Owner now seeks to selectively exclude it to create an incomplete and misleading
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`transcript. Petitioner believes the record speaks for itself and that the Board can
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`appropriately weigh the full record. Patent Owner’s motion as to selected portions
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`of Ex. 2232 [Shanfield Reply Tr.] should be denied.
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`9
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`III. Conclusion
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`For the foregoing reasons, Ex. 2232 [Shanfield Reply Tr.] at 144:1-12,
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`145:1-147:8, 167:14-173:3, and 173:10-178:4 is admissible evidence, and Patent
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`Owner’s Motion to Exclude should be denied.
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`Dated: August 22, 2018 Respectfully Submitted,
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`
`
`/Michael Smith/________________
`Michael H. Smith, Reg. No. 71,190
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`10
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`CERTIFICATE OF SERVICE
`I hereby certify that, on August 22, 2018, I caused a true and correct copy of the
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`foregoing materials:
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` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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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:
`
`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
`
`Joshua Miller, admitted 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
`
`i
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