`Taiwan Semiconductor Manufacturing Co., Ltd. v.
`Godo Kaisha IP Bridge 1
`
`Telephonic Hearing
`September 26, 2018
`
`68 Commercial Wharf • Boston, MA 02110
`888.825.3376 - 617.399.0130
`Global Coverage
`court-reporting.com
`
`Original File Telephonic Hearing 9-26-18.txt
`Min-U-Script® with Word Index
`IP Bridge Exhibit 2234
`TSMC v. Godo Kaisha IP Bridge 1
`IPR2017-01843
`
`
`
`1
`
`
` 1 VOLUME: I
`
` 2 PAGES: 1 - 29
`
` 3
`
` 4 UNITED STATES PATENT AND TRADEMARK OFFICE
`
` 5 BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` 6 *************************************
` TAIWAN SEMICONDUCTOR
` 7 MANUFACTURING COMPANY, LTD.,
` Petitioner
` 8 vs.
`
` 9 GODO KAISHA IP BRIDGE I,
` Patent Owner
`10 *************************************
`
`11 Heard before:
` THE HONORABLE JUSTIN T. ARBES, THE
`12 HONORABLE JENNIFER MEYER CHAGNON and
` THE HONORABLE MELISSA HAAPALA,
`13 Administrative Patent Judges
`
`14
` Case IPR2017-01841
`15
` Case IPR2017-01843
`16
` Patent 7,893,501 B2
`17
`
`18
` TELEPHONIC HEARING
`19
` September 26, 2018
`20
` 2:00 p.m.
`21
`
`22
`
`23 ------ Laurie J. Berg, CCR, RPR, CRR, CLR, CER ------
`
`24
`
`O'Brien & Levine Court Reporting Solutions
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`
`2
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`
` 1 APPEARANCES:
`
` 2 Heard Before THE HONORABLE JUSTIN T. ARBES,
` THE HONORABLE JENNIFER MEYER CHAGNON and
` 3 THE HONORABLE MELISSA HAAPALA
`
` 4 Representing the Petitioner:
`
` 5 WILMER CUTLER PICKERING HALE and DORR, LLP
` David Cavanaugh, Esquire
` 6 Michael H. Smith, Esquire
` 60 State Street
` 7 Boston, Massachusetts 02109
` 617.526.6000
` 8 david.cavanaugh@wilmerhale.com
` michaelh.smith@wilmerhale.com
` 9
`
`10 Representing the Patent Owner:
`
`11 WOLF, GREENFIELD & SACKS, P.C.
` Gerald B. Hrycyszyn, Esquire
`12 Richard F. Giunta, Esquire
` Joshua J. Miller, Esquire
`13 600 Atlantic Avenue
` Boston, Massachusetts 02210-2206
`14 617.646.8000
` ghrycyszyn@wolfgreenfield.com
`15 rgiunta@wolfgreenfield.com
` jmiller@wolfgreenfield.com
`16
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`O'Brien & Levine Court Reporting Solutions
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`Telephonic Hearing - September 26, 2018
`
`3
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`
` 1 P R O C E E D I N G S
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` 2 - - -
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` 3
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` 4 JUDGE ARBES: Hello, everyone. This is
`
` 5 Judge Arbes of the Patent Trial & Appeal Board. I
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` 6 have with me on the line Judge Chagnon and Judge
`
` 7 Haapala.
`
` 8 This is a conference call in Case
`
` 9 IPR2017-01843.
`
`10 We have counsel for Petitioner on the line?
`
`11 MR. CAVANAUGH: Yes, Your Honor. This is
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`12 Dave Cavanaugh for the Petitioner and with me is
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`13 Michael Smith.
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`14 JUDGE ARBES: Okay. And counsel for
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`15 Patent Owner?
`
`16 MR. HRYCYSZYN: Yes, Your Honor.
`
`17 Jerry Hrycyszyn for Patent Owner on the call
`
`18 along with Rich Giunta and Josh Miller.
`
`19 I'd also like to alert the Board to the fact
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`20 that we have a court reporter on the call as well.
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`21 JUDGE ARBES: Sure. Thank you.
`
`22 And please file a copy of the transcript as
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`23 soon as you can after the call today.
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`24 MR. HRYCYSZYN: We will do that, Your
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`Telephonic Hearing - September 26, 2018
`
`4
`
`
` 1 Honor.
`
` 2 JUDGE ARBES: Okay. I believe the call
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` 3 today was requested by Patent Owner to discuss two
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` 4 matters.
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` 5 So, Patent Owner, would you like to go first?
`
` 6 And why don't we take the first one first.
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` 7 MR. HRYCYSZYN: Thank you, Your Honor.
`
` 8 This is Jerry Hrycyszyn on behalf of the
`
` 9 Patent Owner.
`
`10 So with respect to the Board's recent order,
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`11 Paper 40, we are requesting that the Board allow the
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`12 Patent Owner to file with its four-page sur-reply a
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`13 four-page declaration from our expert along with
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`14 supporting evidence.
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`15 Doctor Glew explained to us that Petitioner's
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`16 proposed interpretation of Misra at 6:54-58 is not
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`17 enabled because there is no way of making the
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`18 structure Petitioner identified in the reply. Doctor
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`19 Glew also explained that Petitioner's reading of Misra
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`20 is incorrect and that Misra does not teach making
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`21 spacer 23 out of silicon oxide. Silicon nitride would
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`22 still cover the entire side surfaces of the gate, even
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`23 in the embodiment that the Petitioner now relies on in
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`24 its reply.
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`Telephonic Hearing - September 26, 2018
`
`5
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`
` 1 Now, I mention those things because they're
`
` 2 highly technical; enablement, what's physically
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` 3 possible and not possible, and what does Misra
`
` 4 actually disclose to a person of ordinary skill in the
`
` 5 art. So these are the kinds of issues that require
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` 6 expert testimony and evidence to support.
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` 7 Patent Owner is entitled to introduce this
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` 8 rebuttal evidence under the Administrative Procedure
`
` 9 Act if the Board is going to consider this new
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`10 argument.
`
`11 So, as a reference point, the case In Re
`
`12 NuVasive, 841 F.3d 966, is on all fours here.
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`13 There -- there was a new portion of a reference that
`
`14 was introduced for the first time in a reply and the
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`15 Federal Circuit found -- not only did the Patent Owner
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`16 need to have a -- a chance to file a sur-reply, but
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`17 also to introduce evidence and that observations on
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`18 cross were not good enough.
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`19 And there really the -- the similarities of
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`20 this case are remarkable. There was also a
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`21 consolidated proceeding in which the same Figure 18
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`22 was used in one of the consolidated proceedings but
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`23 not the other. And the Fed Circuit still said that,
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`24 hey, if the Petitioner's going to rely on a new
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`Telephonic Hearing - September 26, 2018
`
`6
`
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` 1 portion of the reference for the first time in the
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` 2 reply, the Patent Owner needs an opportunity to
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` 3 respond with evidence.
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` 4 And it's undisputed here that Petitioner's
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` 5 reply relied on a previously uncited portion of Misra,
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` 6 which is 6:54-58, to argue that Misra allegedly
`
` 7 discloses that spacers 22 -- 23 can be thermally-grown
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` 8 silicon oxide. We still -- Patent Owner still
`
` 9 maintains that this is a new and improper reply
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`10 argument.
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`11 During this meet and -- during the
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`12 meet-and-confer for this call, Petitioner argued that
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`13 Patent Owner was on notice of the disclosure of Misra
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`14 because Patent Owner asked Doctor Shanfield about it
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`15 at his first deposition.
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`16 Patent Owner expressly asked Doctor Shanfield
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`17 if he opined in his opening declaration that spacer 23
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`18 was made of a material other than silicon not --
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`19 nitride. Doctor Shanfield admitted he did not.
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`20 That's Exhibit 2210 at 287:21-288:4.
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`21 And then Shanfield again admitted at his
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`22 deposition, after Petitioner's reply was submitted,
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`23 that he did not provide an opinion in his opening
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`24 declaration that Misra discloses use of material other
`
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`Telephonic Hearing - September 26, 2018
`
`7
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` 1 than silicon nitride for spacer 23. And that's
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` 2 Exhibit 2232 at 38:3-8.
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` 3 Further, though we have not seen the
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` 4 transcript from the oral hearing, our recollection is
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` 5 that Petitioner's counsel conceded that this was a new
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` 6 argument that was not raised prior to the reply. Put
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` 7 simply, this argument was not in the petition and
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` 8 Patent Owner did not have an opportunity to respond to
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` 9 this argument.
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`10 So, to the extent the Board is going to
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`11 consider this argument, then the APA, in particular,
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`12 5 U.S.C. 556(d), requires that Patent Owner have the
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`13 opportunity to submit rebuttal evidence in --
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`14 according with In Re NuVasive.
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`15 JUDGE ARBES: Okay. Counselor, I think I
`
`16 understand your positions. A -- a couple questions to
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`17 make sure I understand it in the request.
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`18 So we have already granted the four-page
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`19 sur-reply. So what you are requesting is a four-page
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`20 expert declaration with other exhibits as supporting
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`21 evidence; is that correct?
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`22 MR. HRYCYSZYN: Yes, Your Honor.
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`23 JUDGE ARBES: Okay. And what -- why --
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`24 can you explain just -- just a bit more why that is --
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`Telephonic Hearing - September 26, 2018
`
`8
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` 1 is necessary?
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` 2 Oftentimes -- and I believe if you've seen
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` 3 the -- the revisions to the Trial Practice Guide -- a
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` 4 sur-reply can be authorized, but due to the -- the
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` 5 late stage of -- of a proceeding that that typically
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` 6 takes place that new evidence typically would not be
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` 7 authorized with that sur-reply.
`
` 8 So can you -- can you explain a bit more why
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` 9 you believe this situation is different?
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`10 MR. HRYCYSZYN: Yes, Your Honor.
`
`11 Because this is a highly technical issue
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`12 related to enablement and what is physically possible,
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`13 with respect to what they're arguing, and a -- and a
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`14 varied technical interpretation of a portion of the
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`15 reference we had not previously known was going to be
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`16 part of the -- the case.
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`17 And, in particular, their expert admitted at
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`18 deposition that he hadn't made this argument. So the
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`19 first time we saw this issue come up was in -- was in
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`20 the reply and -- and that's what NuVasive says. So
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`21 the NuVasive case I cited to you expressly said that
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`22 the Patent Owner needs an opportunity to introduce
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`23 evidence rebutting issues like this.
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`24 And -- and so here, in particular,
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`Telephonic Hearing - September 26, 2018
`
`9
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` 1 Petitioner's expert describes that the thermally-grown
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` 2 silicon oxide -- this is Paragraph 10 in his reply
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` 3 declaration -- are formed on top of the silicide
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` 4 layer, which is shown as 18 in Figure 4 at the point
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` 5 in the process when spacers 23 are formed. Doctor
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` 6 Glew explained that that is not possible because the
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` 7 silicide 18 is located under silicon nitride layer 20,
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` 8 which is a diffusion barrier to that reaction.
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` 9 So we need an expert that can explain what
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`10 silicon nitride does, what is that part in the
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`11 structure and that the presence of the silicon nitride
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`12 wouldn't allow that to occur. It's simply not
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`13 possible to grow the -- the silicon dioxide on top of
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`14 silicide 18.
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`15 Now, Doctor Glew would also explain that the
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`16 silicon nitride spacers -- this is in the disputed
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`17 portion of Misra -- are actually replaced with new
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`18 silicon nitride, because the silicon nitride that's
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`19 there is damaged during the ion implantation process
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`20 which occurs, so -- and that's actually what happens
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`21 with the sacrificial oxide 25 that covers the bottom
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`22 of the gate area. So the reference already discloses
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`23 that -- that portions get damaged and need to be
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`24 removed and replaced and this is just consistent with
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`Telephonic Hearing - September 26, 2018
`
`10
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` 1 that.
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` 2 But the -- these are highly technical issues
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` 3 that attorney argument -- we can provide attorney
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` 4 argument in a sur-reply, but at the end of the day,
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` 5 they're -- they're technical and the kinds of things
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` 6 that should be covered by an expert, as NuVasive says.
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` 7 JUDGE ARBES: Okay.
`
` 8 MR. HRYCYSZYN: Does that answer your
`
` 9 question?
`
`10 JUDGE ARBES: Yes. And we can hear from
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`11 Petitioner in a moment -- in a moment, but I'd like to
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`12 hear your proposal first.
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`13 So if -- if we were to permit another expert
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`14 declaration, presumably that expert would need to be
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`15 cross-examined as well and there would need to be some
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`16 sort of process to bring that to our attention.
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`17 What -- do you have a proposal in that
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`18 regard?
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`19 MR. HRYCYSZYN: Yes, Your Honor, we do.
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`20 So we would certainly make the expert
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`21 available for cross-examination. We believe
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`22 observations on cross at that point would be adequate
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`23 for Petitioner to address any issues they find on
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`24 cross-examination.
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`Telephonic Hearing - September 26, 2018
`
`11
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`
` 1 We do not believe that experts should get to
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` 2 file their own new paper, new expert report. They've
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` 3 now had, you know, two chances to try to get this in.
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` 4 They didn't get it in in the petition. They didn't
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` 5 get it in in the reply. They don't need a third
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` 6 chance to try to get in another paper and expert
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` 7 testimony on this issue.
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` 8 JUDGE ARBES: Thank you.
`
` 9 Counsel for Petitioner, would you like to
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`10 respond?
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`11 MR. CAVANAUGH: Sure. Yes. Thank you,
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`12 Your Honor. Yeah. I'll -- I'll be brief.
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`13 And -- and, you know, the -- I think there
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`14 are two central questions; both, you know, kind of
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`15 point to kind of a -- kind of reasons why the Board
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`16 should reject -- reject this request.
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`17 First, the Petitioner's reply did not raise
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`18 new arguments. You know, what -- and I -- I think
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`19 it's important to -- to focus the Board on, what the
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`20 petition was required to do and did, in fact, do, was
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`21 to show that the gate electrode 28b in Misra protrudes
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`22 above the silicon nitride film 20, and that's
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`23 sufficient to match the prior art with the claim
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`24 limitation. And the -- and -- and, accordingly, we
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`Telephonic Hearing - September 26, 2018
`
`12
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` 1 met our burden to demonstrate the claims of -- of
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` 2 Misra are met by -- I'm sorry -- the claims of the
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` 3 '501 patent are met by Misra.
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` 4 And -- and, you know, the -- the Patent Owner
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` 5 doesn't dispute -- because they cannot -- that the
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` 6 sidewalls are not a recited limitation of Claim 1.
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` 7 And, you know, the Patent Owner himself
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` 8 that's -- identified no authority ex -- for the
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` 9 proposition that a Petitioner must address elements
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`10 that are not limitations of the claim, which is
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`11 essentially what they're trying to -- to indicate,
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`12 which they are indicating, that -- that the -- that
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`13 the Panel should be -- should be permitting.
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`14 And -- and -- you know, I -- as we said in
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`15 the oral argument, like, that is simply not a
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`16 requirement of the petition and it is, you know, a --
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`17 a mistake in argument to say that that is a new
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`18 argument on reply.
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`19 The petition -- our -- I'm sorry -- our reply
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`20 properly identifies how the petition demonstrates the
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`21 protruding gate electrode and, you know, the PLR --
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`22 POR, like, it -- that the Patent Owner filed failed to
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`23 rebut that. Like, you know, they obviously knew about
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`24 this issue because they cross-examined Doctor
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`Telephonic Hearing - September 26, 2018
`
`13
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` 1 Shanfield on it. The question of whether or not a
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` 2 nonlimitation was a part of a declaration or a -- a
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` 3 petition just simply is -- is not material to whether
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` 4 or not, you know, it is, you know, something that they
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` 5 should be permitted to have a declaration on now.
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` 6 You know, Doctor -- and just to identify for
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` 7 Your Honors, as we said in our reply on Page 2 and
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` 8 Pages 4 and 6, you know, the Shanfield deposition
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` 9 discusses this particular issue, so they -- they
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`10 obviously knew about it. They had an opportunity to
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`11 addrect -- to address the testimony in the disclosure
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`12 and the POR and they chose not to. And that -- that
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`13 itself, you know, was their election. And, you know,
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`14 they could've said, this is a new argument, but if
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`15 it's not a new argument, you know, this is what Doctor
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`16 Glew's testimony would be on -- on this particular
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`17 issue.
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`18 They elected not to do that. It wasn't -- it
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`19 wasn't -- it -- like, it is not something that -- that
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`20 they were -- that -- that -- whether it was by
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`21 strategy, whether it was by omission or just whistling
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`22 by the graveyard, they -- they elected not to have
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`23 Doctor Glew testify about that disclosure in Misra and
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`24 -- and elected to argue that it was a new argument.
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`Telephonic Hearing - September 26, 2018
`
`14
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` 1 In our position, it is not a new argument
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` 2 and, in our position, the reply adequately describes
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` 3 how both the limitations of the claim are met, and
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` 4 secondarily, you know, what the disclosure of Misra is
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` 5 that -- that eviscerates the -- the Patent Owner's
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` 6 argument on -- on the silicon nitride film.
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` 7 And -- and so, from -- you know, the Patent
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` 8 Owner -- I mean, I have two more points, Your Honor,
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` 9 and I'll -- I'll kind of stop.
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`10 But, you know, the -- the Patent Owner has
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`11 had an opportunity to -- in the POR to identify
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`12 reasons for the very same complicated,
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`13 highly-technical issues that they seek to put before
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`14 the Board now. It is something that they could've
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`15 done earlier and so they haven't adequately explained
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`16 why they didn't do it in their POR.
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`17 The Patent Owner was also granted leave to
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`18 file an identification of new arguments and they did
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`19 in Paper 27 and we've addressed those, so I -- I think
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`20 they've already had this second bite at the apple.
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`21 And then they believe they were entitled to file a
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`22 sur-reply with a declaration and the PO -- Patent
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`23 Owner did in the 1841 IPR.
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`24 But, you know, the Patent Owner has had
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`Telephonic Hearing - September 26, 2018
`
`15
`
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` 1 multiple opportunities for subsequent briefing here
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` 2 and it -- it's highly unusual to have subsequent
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` 3 briefing, especially with expert declarations after
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` 4 the oral argument. And, certainly, it's more -- even
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` 5 more highly unusual when the Patent Owner obviously
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` 6 had an opportunity to address something that they knew
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` 7 about, that they elected to just say was a new issue.
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` 8 And -- and so, I -- I guess the -- the last
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` 9 thing I'll say is -- is that, you know, the -- the
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`10 additional briefing, you know, is -- you know, we --
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`11 we understand the Board has granted that as a -- Sua
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`12 Sponte order. Certainly, it -- it's something that --
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`13 that possibly could be helpful to the Board.
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`14 But -- but our question on this particular,
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`15 like, issue is, like, when does -- when does this
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`16 proceeding stop? Like -- like, we -- we have argue --
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`17 made the oral argument, you know, we have said, it's
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`18 not an new issue, we've invited the Patent Owner to
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`19 identify a case that would say, there is a requirement
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`20 that we identify how a nonlimitation of the claim is a
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`21 part of a reference. I mean, that -- that's
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`22 essentially what they're trying to do with the
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`23 sidewall.
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`24 And so, you know, with all of that, we're --
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`Telephonic Hearing - September 26, 2018
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`16
`
`
` 1 we're -- you know, we're -- we're a bit at a loss,
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` 2 like, why, in this proceeding, why now, and, you know,
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` 3 to the extent that the Patent Owner thinks that they
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` 4 haven't had an opportunity to respond to this issue
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` 5 and -- and Your Honors would grant them an opportunity
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` 6 to file a declaration, like, we -- we would
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` 7 respectfully request the same courtesy of -- of being
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` 8 able to introduce new evidence, because, obviously,
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` 9 the -- the Patent Owner wants to reopen the proceeding
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`10 to -- to allow additional evidence in and I do think
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`11 it's important that the Board hear, on a testimonial
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`12 side, from both parties.
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`13 And -- and those are my comments, Sir.
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`14 JUDGE ARBES: Thank you.
`
`15 Counsel for Petitioner can have the -- the
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`16 last word and then -- then we can move on to the
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`17 second issue.
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`18 MR. HRYCYSZYN: For -- Patent Owner would
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`19 just like to respond to a couple of those points very
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`20 quickly.
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`21 So it's -- it's undisputed that the portion
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`22 of Misra that -- that they're relying on now was not
`
`23 in the petition. Patent Owner was not on notice that
`
`24 this was something that they were going to rely on.
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`Telephonic Hearing - September 26, 2018
`
`17
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`
` 1 Their expert admitted at his opening deposition that
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` 2 this was not an argument he was making. We were not
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` 3 on notice of what argument they were going to make.
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` 4 And then the sidewalls argument not being a
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` 5 limitation is -- is a red herring. They're basically
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` 6 trying to say that they can ignore the silicon nitride
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` 7 film that is closest to the gate by simply calling it
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` 8 something else. Well, we're not -- we're going to
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` 9 ignore that it's a film and say that it's a sidewall.
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`10 But we -- that was thoroughly rebutted during --
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`11 during this proceeding and I can point Your Honors to
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`12 the -- to the portion of our -- so if you would -- if
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`13 you can look at Slide 27 in -- let's see -- in their
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`14 reply, they refer to this as a "new embodiment," so
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`15 I'm sorry --
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`16 MR. CAVANAUGH: I'm sorry. This is Dave
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`17 Cavanaugh.
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`18 I -- I don't know what you're referring to
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`19 and you -- you mentioned a slide. Is -- is there
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`20 something you're referring to that -- that you could
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`21 help me understand what you're describing?
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`22 MR. HRYCYSZYN: Yeah, sure.
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`23 JUDGE ARBES: Counsel, if you can -- if
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`24 you can give us the -- the paper number and page
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`Telephonic Hearing - September 26, 2018
`
`18
`
`
` 1 number, that would be helpful.
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` 2 MR. HRYCYSZYN: Sure. So in the Patent
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` 3 Owner response at 35 to 38, we cite -- we explain that
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` 4 -- that sidewalls can be films and this is supported
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` 5 by the expert declaration in those pages as well.
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` 6 JUDGE ARBES: And I -- are you referring
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` 7 to something from the Petitioner's reply as well?
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` 8 MR. HRYCYSZYN: So, yeah, in the
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` 9 Petitioner's reply, they actually refer to this
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`10 portion of Misra as "another embodiment," so then --
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`11 JUDGE ARBES: Which -- which page is
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`12 that, Counsel?
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`13 MR. HRYCYSZYN: That is in the reply at
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`14 two to three. That is also in Exhibit 1232, which is
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`15 Paragraph 9, which is their reply expert report, and
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`16 it's also in Slide 27 in their demonstratives.
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`17 It -- this other embodiment, which is
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`18 supposedly silicon dioxide, is repeatedly referred to
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`19 as "another embodiment." So what they're trying to do
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`20 is point to another embodiment that they never refer
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`21 to in their petition.
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`22 And we also want to say, NuVasive is clear,
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`23 the APA vio -- there's an APA violation if we do not
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`24 get to introduce evidence to respond to this.
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`Telephonic Hearing - September 26, 2018
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`19
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` 1 Petitioner's trying to extend the proceeding by
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` 2 introducing this new evidence in a reply. It's not
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` 3 the Patent Owner that's trying to do that by citing a
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` 4 new portion of Misra in its reply.
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` 5 MR. CAVANAUGH: Your Honor, if I could
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` 6 just make two points very, very briefly?
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` 7 One, the Patent Owner --
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` 8 JUDGE ARBES: Sure. Go ahead, Counsel.
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` 9 MR. HRYCYSZYN: -- didn't share -- the
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`10 Patent Owner didn't share NuVasive with us, so we
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`11 can't comment on its applicability or -- or
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`12 distinguish it for Your Honors, but -- but we will --
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`13 will say this, I mean, the fact that they can identify
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`14 something in the POR that's relevant does indicate
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`15 that they have had an opportunity to consider and
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`16 brief this issue. They elected to say that it was a
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`17 new issue. They elected not to have Doctor Glew
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`18 testify to it.
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`19 And so, you know, there's -- there's simply
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`20 no reason in the -- in the record, and so, you know,
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`21 their -- their -- their protestations about an APA
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`22 violation are -- are -- are -- are kind of based on
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`23 the misunderstanding that somehow there's a new
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`24 argument here and it's not.
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`Telephonic Hearing - September 26, 2018
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`20
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` 1 JUDGE ARBES: Okay. I -- I think,
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` 2 Counsel, we understand the parties' positions --
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` 3 MR. CAVANAUGH: Okay.
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` 4 JUDGE ARBES: -- as to whether there was
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` 5 or -- an improper new argument made or not. We have
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` 6 the parties' positions on that. We have not made that
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` 7 -- that decision -- that decision yet, so we don't
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` 8 need argument on that today, but I believe now we
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` 9 understand both parties' positions as to whether any
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`10 additional evidence should be authorized with the
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`11 sur-reply.
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`12 So why don't we move on to the second issue
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`13 in Patent Owner's e-mail.
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`14 So, Counsel, would you like to explain what
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`15 you are requesting there and the basis for that?
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`16 MR. HRYCYSZYN: Yes, Your Honor. So,
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`17 again, this is Jerry Hrycyszyn.
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`18 At the oral hearing, Judge Haapala asked a
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`19 series of questions regarding Figure 1 of the '501
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`20 patent, whether the statements at Column 3, Lines 32
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`21 to 34 and -- and other close portions show that the
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`22 '501 specification treats gate insulating film 5,
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`23 which is adjacent to sidewall 7, as different films
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`24 even though they are made of the same material.
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`Telephonic Hearing - September 26, 2018
`
`21
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`
` 1 This issue was not addressed by either party
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` 2 or any expert during the proceeding. The issue was
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` 3 raised for the first time at the oral argument by the
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` 4 Board.
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` 5 Our expert, Doctor Glew, has explained to us
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` 6 that neither this portion of the '501 patent, nor any
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` 7 other, treats adjacent films that are made of the same
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` 8 material as different films.
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` 9 Accordingly, if the Board's going to consider
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`10 how the '501 patent treats films 5 and 7 in its
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`11 analysis, we believe it is necessary that the Board
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`12 hear from the experts, both sides, as to how a POSA
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`13 would read and understand these portions of the
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`14 specification.
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`15 Patent Owner's expert would provide testimony
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`16 that explains these portions of the spec are
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`17 consistent with Patent Owner's proposed interpretation
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`18 of film. Petitioner opposes this request, perhaps
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`19 because they don't -- they know it does not support
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`20 their construction.
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`21 Patent Owner believes that the APA requires
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`22 that the Patent Owner have the opportunity to respond
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`23 fully to the arguments, to the extent the Panel
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`24 contemplates relying on these disclosures and
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`Telephonic Hearing - September 26, 2018
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`22
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`
` 1 arguments in its written decision. And NuVasive,
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` 2 again, is the relevant case there.
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` 3 JUDGE ARBES: But, Counsel, were -- were
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` 4 these arguments made by the Petitioner that Patent
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` 5 Owner wants to respond to or was this just part of the
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` 6 Panel's inquiry to counsel for both parties at -- at
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` 7 the hearing?
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` 8 MR. HRYCYSZYN: Your Honor, these were in
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` 9 response to the Panel's inquiries during the hearing.
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`10 JUDGE ARBES: Okay. But you -- you
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`11 believe that -- that briefing is necessary to further
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`12 respond to those questions or?
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`13 MR. HRYCYSZYN: Yes, Your Honor, because,
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`14 here again, it's processes that are disclosed in the
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`15 '501 patent and what those processes mean and with
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`16 respect to the materials.
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`17 So there are different materials that are
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`18 disclosed for the gate insulating film and the -- the
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`19 sidewalls. So they're different materials and that's
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`20 why we need an expert to explain to the Board how to
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`21 interpret what the disclosure is and that these are
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`22 different materials. And that's why they're referred
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`23 to -- or at least they're not necessarily the same
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`24 material. There are multiple materials that are
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`Telephonic Hearing - September 26, 2018
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`23
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`
` 1 disclosed in the processes that are disclosed
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` 2 contemplate creating different materials.
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` 3 JUDGE ARBES: I see.
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` 4 And that -- that ultimately would support
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` 5 Patent Owner's proposed interpretation in the case, I
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` 6 take it?
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` 7 MR. HRYCYSZYN: Yes, Your Honor. That's
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` 8 right.
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` 9 JUDGE ARBES: Okay.
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`10 MR. HRYCYSZYN: And -- and that same
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`11 case, NuVasive, even if the Board is raising arguments
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`12 for the first time that it's considering, we should
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`13 have an opportunity to introduce evidence to -- to
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`14 make sure the Board has everything it needs to
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`15 consider it.
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`16 JUDGE ARBES: Okay. Counsel for
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`17 Petitioner, if you'd like to respond?
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`18 MR. CAVANAUGH: Yes, Your Honor. Thank
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`19 you. Dave Cavanaugh here.
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`20 And the -- a couple different points with
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`21 regard to the Patent Owner's request for really
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`22 reopening the proceeding.
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`23 You know, our position is that it should be
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`24 redect -- rejected. You know that the Patent Owner
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