In The Matter Of:
`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
`
`
`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
`888.825.3376 - mail@court-reporting.com
`
`
`
`2
`
`
` 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
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`3
`
`
` 1 P R O C E E D I N G S
`
` 2 - - -
`
` 3
`
` 4 JUDGE ARBES: Hello, everyone. This is
`
` 5 Judge Arbes of the Patent Trial & Appeal Board. I
`
` 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
`
`12 Dave Cavanaugh for the Petitioner and with me is
`
`13 Michael Smith.
`
`14 JUDGE ARBES: Okay. And counsel for
`
`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
`
`20 that we have a court reporter on the call as well.
`
`21 JUDGE ARBES: Sure. Thank you.
`
`22 And please file a copy of the transcript as
`
`23 soon as you can after the call today.
`
`24 MR. HRYCYSZYN: We will do that, Your
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`4
`
`
` 1 Honor.
`
` 2 JUDGE ARBES: Okay. I believe the call
`
` 3 today was requested by Patent Owner to discuss two
`
` 4 matters.
`
` 5 So, Patent Owner, would you like to go first?
`
` 6 And why don't we take the first one first.
`
` 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,
`
`11 Paper 40, we are requesting that the Board allow the
`
`12 Patent Owner to file with its four-page sur-reply a
`
`13 four-page declaration from our expert along with
`
`14 supporting evidence.
`
`15 Doctor Glew explained to us that Petitioner's
`
`16 proposed interpretation of Misra at 6:54-58 is not
`
`17 enabled because there is no way of making the
`
`18 structure Petitioner identified in the reply. Doctor
`
`19 Glew also explained that Petitioner's reading of Misra
`
`20 is incorrect and that Misra does not teach making
`
`21 spacer 23 out of silicon oxide. Silicon nitride would
`
`22 still cover the entire side surfaces of the gate, even
`
`23 in the embodiment that the Petitioner now relies on in
`
`24 its reply.
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`5
`
`
` 1 Now, I mention those things because they're
`
` 2 highly technical; enablement, what's physically
`
` 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
`
` 6 expert testimony and evidence to support.
`
` 7 Patent Owner is entitled to introduce this
`
` 8 rebuttal evidence under the Administrative Procedure
`
` 9 Act if the Board is going to consider this new
`
`10 argument.
`
`11 So, as a reference point, the case In Re
`
`12 NuVasive, 841 F.3d 966, is on all fours here.
`
`13 There -- there was a new portion of a reference that
`
`14 was introduced for the first time in a reply and the
`
`15 Federal Circuit found -- not only did the Patent Owner
`
`16 need to have a -- a chance to file a sur-reply, but
`
`17 also to introduce evidence and that observations on
`
`18 cross were not good enough.
`
`19 And there really the -- the similarities of
`
`20 this case are remarkable. There was also a
`
`21 consolidated proceeding in which the same Figure 18
`
`22 was used in one of the consolidated proceedings but
`
`23 not the other. And the Fed Circuit still said that,
`
`24 hey, if the Petitioner's going to rely on a new
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`6
`
`
` 1 portion of the reference for the first time in the
`
` 2 reply, the Patent Owner needs an opportunity to
`
` 3 respond with evidence.
`
` 4 And it's undisputed here that Petitioner's
`
` 5 reply relied on a previously uncited portion of Misra,
`
` 6 which is 6:54-58, to argue that Misra allegedly
`
` 7 discloses that spacers 22 -- 23 can be thermally-grown
`
` 8 silicon oxide. We still -- Patent Owner still
`
` 9 maintains that this is a new and improper reply
`
`10 argument.
`
`11 During this meet and -- during the
`
`12 meet-and-confer for this call, Petitioner argued that
`
`13 Patent Owner was on notice of the disclosure of Misra
`
`14 because Patent Owner asked Doctor Shanfield about it
`
`15 at his first deposition.
`
`16 Patent Owner expressly asked Doctor Shanfield
`
`17 if he opined in his opening declaration that spacer 23
`
`18 was made of a material other than silicon not --
`
`19 nitride. Doctor Shanfield admitted he did not.
`
`20 That's Exhibit 2210 at 287:21-288:4.
`
`21 And then Shanfield again admitted at his
`
`22 deposition, after Petitioner's reply was submitted,
`
`23 that he did not provide an opinion in his opening
`
`24 declaration that Misra discloses use of material other
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`7
`
`
` 1 than silicon nitride for spacer 23. And that's
`
` 2 Exhibit 2232 at 38:3-8.
`
` 3 Further, though we have not seen the
`
` 4 transcript from the oral hearing, our recollection is
`
` 5 that Petitioner's counsel conceded that this was a new
`
` 6 argument that was not raised prior to the reply. Put
`
` 7 simply, this argument was not in the petition and
`
` 8 Patent Owner did not have an opportunity to respond to
`
` 9 this argument.
`
`10 So, to the extent the Board is going to
`
`11 consider this argument, then the APA, in particular,
`
`12 5 U.S.C. 556(d), requires that Patent Owner have the
`
`13 opportunity to submit rebuttal evidence in --
`
`14 according with In Re NuVasive.
`
`15 JUDGE ARBES: Okay. Counselor, I think I
`
`16 understand your positions. A -- a couple questions to
`
`17 make sure I understand it in the request.
`
`18 So we have already granted the four-page
`
`19 sur-reply. So what you are requesting is a four-page
`
`20 expert declaration with other exhibits as supporting
`
`21 evidence; is that correct?
`
`22 MR. HRYCYSZYN: Yes, Your Honor.
`
`23 JUDGE ARBES: Okay. And what -- why --
`
`24 can you explain just -- just a bit more why that is --
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`8
`
`
` 1 is necessary?
`
` 2 Oftentimes -- and I believe if you've seen
`
` 3 the -- the revisions to the Trial Practice Guide -- a
`
` 4 sur-reply can be authorized, but due to the -- the
`
` 5 late stage of -- of a proceeding that that typically
`
` 6 takes place that new evidence typically would not be
`
` 7 authorized with that sur-reply.
`
` 8 So can you -- can you explain a bit more why
`
` 9 you believe this situation is different?
`
`10 MR. HRYCYSZYN: Yes, Your Honor.
`
`11 Because this is a highly technical issue
`
`12 related to enablement and what is physically possible,
`
`13 with respect to what they're arguing, and a -- and a
`
`14 varied technical interpretation of a portion of the
`
`15 reference we had not previously known was going to be
`
`16 part of the -- the case.
`
`17 And, in particular, their expert admitted at
`
`18 deposition that he hadn't made this argument. So the
`
`19 first time we saw this issue come up was in -- was in
`
`20 the reply and -- and that's what NuVasive says. So
`
`21 the NuVasive case I cited to you expressly said that
`
`22 the Patent Owner needs an opportunity to introduce
`
`23 evidence rebutting issues like this.
`
`24 And -- and so here, in particular,
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`9
`
`
` 1 Petitioner's expert describes that the thermally-grown
`
` 2 silicon oxide -- this is Paragraph 10 in his reply
`
` 3 declaration -- are formed on top of the silicide
`
` 4 layer, which is shown as 18 in Figure 4 at the point
`
` 5 in the process when spacers 23 are formed. Doctor
`
` 6 Glew explained that that is not possible because the
`
` 7 silicide 18 is located under silicon nitride layer 20,
`
` 8 which is a diffusion barrier to that reaction.
`
` 9 So we need an expert that can explain what
`
`10 silicon nitride does, what is that part in the
`
`11 structure and that the presence of the silicon nitride
`
`12 wouldn't allow that to occur. It's simply not
`
`13 possible to grow the -- the silicon dioxide on top of
`
`14 silicide 18.
`
`15 Now, Doctor Glew would also explain that the
`
`16 silicon nitride spacers -- this is in the disputed
`
`17 portion of Misra -- are actually replaced with new
`
`18 silicon nitride, because the silicon nitride that's
`
`19 there is damaged during the ion implantation process
`
`20 which occurs, so -- and that's actually what happens
`
`21 with the sacrificial oxide 25 that covers the bottom
`
`22 of the gate area. So the reference already discloses
`
`23 that -- that portions get damaged and need to be
`
`24 removed and replaced and this is just consistent with
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`10
`
`
` 1 that.
`
` 2 But the -- these are highly technical issues
`
` 3 that attorney argument -- we can provide attorney
`
` 4 argument in a sur-reply, but at the end of the day,
`
` 5 they're -- they're technical and the kinds of things
`
` 6 that should be covered by an expert, as NuVasive says.
`
` 7 JUDGE ARBES: Okay.
`
` 8 MR. HRYCYSZYN: Does that answer your
`
` 9 question?
`
`10 JUDGE ARBES: Yes. And we can hear from
`
`11 Petitioner in a moment -- in a moment, but I'd like to
`
`12 hear your proposal first.
`
`13 So if -- if we were to permit another expert
`
`14 declaration, presumably that expert would need to be
`
`15 cross-examined as well and there would need to be some
`
`16 sort of process to bring that to our attention.
`
`17 What -- do you have a proposal in that
`
`18 regard?
`
`19 MR. HRYCYSZYN: Yes, Your Honor, we do.
`
`20 So we would certainly make the expert
`
`21 available for cross-examination. We believe
`
`22 observations on cross at that point would be adequate
`
`23 for Petitioner to address any issues they find on
`
`24 cross-examination.
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`11
`
`
` 1 We do not believe that experts should get to
`
` 2 file their own new paper, new expert report. They've
`
` 3 now had, you know, two chances to try to get this in.
`
` 4 They didn't get it in in the petition. They didn't
`
` 5 get it in in the reply. They don't need a third
`
` 6 chance to try to get in another paper and expert
`
` 7 testimony on this issue.
`
` 8 JUDGE ARBES: Thank you.
`
` 9 Counsel for Petitioner, would you like to
`
`10 respond?
`
`11 MR. CAVANAUGH: Sure. Yes. Thank you,
`
`12 Your Honor. Yeah. I'll -- I'll be brief.
`
`13 And -- and, you know, the -- I think there
`
`14 are two central questions; both, you know, kind of
`
`15 point to kind of a -- kind of reasons why the Board
`
`16 should reject -- reject this request.
`
`17 First, the Petitioner's reply did not raise
`
`18 new arguments. You know, what -- and I -- I think
`
`19 it's important to -- to focus the Board on, what the
`
`20 petition was required to do and did, in fact, do, was
`
`21 to show that the gate electrode 28b in Misra protrudes
`
`22 above the silicon nitride film 20, and that's
`
`23 sufficient to match the prior art with the claim
`
`24 limitation. And the -- and -- and, accordingly, we
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`12
`
`
` 1 met our burden to demonstrate the claims of -- of
`
` 2 Misra are met by -- I'm sorry -- the claims of the
`
` 3 '501 patent are met by Misra.
`
` 4 And -- and, you know, the -- the Patent Owner
`
` 5 doesn't dispute -- because they cannot -- that the
`
` 6 sidewalls are not a recited limitation of Claim 1.
`
` 7 And, you know, the Patent Owner himself
`
` 8 that's -- identified no authority ex -- for the
`
` 9 proposition that a Petitioner must address elements
`
`10 that are not limitations of the claim, which is
`
`11 essentially what they're trying to -- to indicate,
`
`12 which they are indicating, that -- that the -- that
`
`13 the Panel should be -- should be permitting.
`
`14 And -- and -- you know, I -- as we said in
`
`15 the oral argument, like, that is simply not a
`
`16 requirement of the petition and it is, you know, a --
`
`17 a mistake in argument to say that that is a new
`
`18 argument on reply.
`
`19 The petition -- our -- I'm sorry -- our reply
`
`20 properly identifies how the petition demonstrates the
`
`21 protruding gate electrode and, you know, the PLR --
`
`22 POR, like, it -- that the Patent Owner filed failed to
`
`23 rebut that. Like, you know, they obviously knew about
`
`24 this issue because they cross-examined Doctor
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`13
`
`
` 1 Shanfield on it. The question of whether or not a
`
` 2 nonlimitation was a part of a declaration or a -- a
`
` 3 petition just simply is -- is not material to whether
`
` 4 or not, you know, it is, you know, something that they
`
` 5 should be permitted to have a declaration on now.
`
` 6 You know, Doctor -- and just to identify for
`
` 7 Your Honors, as we said in our reply on Page 2 and
`
` 8 Pages 4 and 6, you know, the Shanfield deposition
`
` 9 discusses this particular issue, so they -- they
`
`10 obviously knew about it. They had an opportunity to
`
`11 addrect -- to address the testimony in the disclosure
`
`12 and the POR and they chose not to. And that -- that
`
`13 itself, you know, was their election. And, you know,
`
`14 they could've said, this is a new argument, but if
`
`15 it's not a new argument, you know, this is what Doctor
`
`16 Glew's testimony would be on -- on this particular
`
`17 issue.
`
`18 They elected not to do that. It wasn't -- it
`
`19 wasn't -- it -- like, it is not something that -- that
`
`20 they were -- that -- that -- whether it was by
`
`21 strategy, whether it was by omission or just whistling
`
`22 by the graveyard, they -- they elected not to have
`
`23 Doctor Glew testify about that disclosure in Misra and
`
`24 -- and elected to argue that it was a new argument.
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`14
`
`
` 1 In our position, it is not a new argument
`
` 2 and, in our position, the reply adequately describes
`
` 3 how both the limitations of the claim are met, and
`
` 4 secondarily, you know, what the disclosure of Misra is
`
` 5 that -- that eviscerates the -- the Patent Owner's
`
` 6 argument on -- on the silicon nitride film.
`
` 7 And -- and so, from -- you know, the Patent
`
` 8 Owner -- I mean, I have two more points, Your Honor,
`
` 9 and I'll -- I'll kind of stop.
`
`10 But, you know, the -- the Patent Owner has
`
`11 had an opportunity to -- in the POR to identify
`
`12 reasons for the very same complicated,
`
`13 highly-technical issues that they seek to put before
`
`14 the Board now. It is something that they could've
`
`15 done earlier and so they haven't adequately explained
`
`16 why they didn't do it in their POR.
`
`17 The Patent Owner was also granted leave to
`
`18 file an identification of new arguments and they did
`
`19 in Paper 27 and we've addressed those, so I -- I think
`
`20 they've already had this second bite at the apple.
`
`21 And then they believe they were entitled to file a
`
`22 sur-reply with a declaration and the PO -- Patent
`
`23 Owner did in the 1841 IPR.
`
`24 But, you know, the Patent Owner has had
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`15
`
`
` 1 multiple opportunities for subsequent briefing here
`
` 2 and it -- it's highly unusual to have subsequent
`
` 3 briefing, especially with expert declarations after
`
` 4 the oral argument. And, certainly, it's more -- even
`
` 5 more highly unusual when the Patent Owner obviously
`
` 6 had an opportunity to address something that they knew
`
` 7 about, that they elected to just say was a new issue.
`
` 8 And -- and so, I -- I guess the -- the last
`
` 9 thing I'll say is -- is that, you know, the -- the
`
`10 additional briefing, you know, is -- you know, we --
`
`11 we understand the Board has granted that as a -- Sua
`
`12 Sponte order. Certainly, it -- it's something that --
`
`13 that possibly could be helpful to the Board.
`
`14 But -- but our question on this particular,
`
`15 like, issue is, like, when does -- when does this
`
`16 proceeding stop? Like -- like, we -- we have argue --
`
`17 made the oral argument, you know, we have said, it's
`
`18 not an new issue, we've invited the Patent Owner to
`
`19 identify a case that would say, there is a requirement
`
`20 that we identify how a nonlimitation of the claim is a
`
`21 part of a reference. I mean, that -- that's
`
`22 essentially what they're trying to do with the
`
`23 sidewall.
`
`24 And so, you know, with all of that, we're --
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`16
`
`
` 1 we're -- you know, we're -- we're a bit at a loss,
`
` 2 like, why, in this proceeding, why now, and, you know,
`
` 3 to the extent that the Patent Owner thinks that they
`
` 4 haven't had an opportunity to respond to this issue
`
` 5 and -- and Your Honors would grant them an opportunity
`
` 6 to file a declaration, like, we -- we would
`
` 7 respectfully request the same courtesy of -- of being
`
` 8 able to introduce new evidence, because, obviously,
`
` 9 the -- the Patent Owner wants to reopen the proceeding
`
`10 to -- to allow additional evidence in and I do think
`
`11 it's important that the Board hear, on a testimonial
`
`12 side, from both parties.
`
`13 And -- and those are my comments, Sir.
`
`14 JUDGE ARBES: Thank you.
`
`15 Counsel for Petitioner can have the -- the
`
`16 last word and then -- then we can move on to the
`
`17 second issue.
`
`18 MR. HRYCYSZYN: For -- Patent Owner would
`
`19 just like to respond to a couple of those points very
`
`20 quickly.
`
`21 So it's -- it's undisputed that the portion
`
`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.
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`17
`
`
` 1 Their expert admitted at his opening deposition that
`
` 2 this was not an argument he was making. We were not
`
` 3 on notice of what argument they were going to make.
`
` 4 And then the sidewalls argument not being a
`
` 5 limitation is -- is a red herring. They're basically
`
` 6 trying to say that they can ignore the silicon nitride
`
` 7 film that is closest to the gate by simply calling it
`
` 8 something else. Well, we're not -- we're going to
`
` 9 ignore that it's a film and say that it's a sidewall.
`
`10 But we -- that was thoroughly rebutted during --
`
`11 during this proceeding and I can point Your Honors to
`
`12 the -- to the portion of our -- so if you would -- if
`
`13 you can look at Slide 27 in -- let's see -- in their
`
`14 reply, they refer to this as a "new embodiment," so
`
`15 I'm sorry --
`
`16 MR. CAVANAUGH: I'm sorry. This is Dave
`
`17 Cavanaugh.
`
`18 I -- I don't know what you're referring to
`
`19 and you -- you mentioned a slide. Is -- is there
`
`20 something you're referring to that -- that you could
`
`21 help me understand what you're describing?
`
`22 MR. HRYCYSZYN: Yeah, sure.
`
`23 JUDGE ARBES: Counsel, if you can -- if
`
`24 you can give us the -- the paper number and page
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`18
`
`
` 1 number, that would be helpful.
`
` 2 MR. HRYCYSZYN: Sure. So in the Patent
`
` 3 Owner response at 35 to 38, we cite -- we explain that
`
` 4 -- that sidewalls can be films and this is supported
`
` 5 by the expert declaration in those pages as well.
`
` 6 JUDGE ARBES: And I -- are you referring
`
` 7 to something from the Petitioner's reply as well?
`
` 8 MR. HRYCYSZYN: So, yeah, in the
`
` 9 Petitioner's reply, they actually refer to this
`
`10 portion of Misra as "another embodiment," so then --
`
`11 JUDGE ARBES: Which -- which page is
`
`12 that, Counsel?
`
`13 MR. HRYCYSZYN: That is in the reply at
`
`14 two to three. That is also in Exhibit 1232, which is
`
`15 Paragraph 9, which is their reply expert report, and
`
`16 it's also in Slide 27 in their demonstratives.
`
`17 It -- this other embodiment, which is
`
`18 supposedly silicon dioxide, is repeatedly referred to
`
`19 as "another embodiment." So what they're trying to do
`
`20 is point to another embodiment that they never refer
`
`21 to in their petition.
`
`22 And we also want to say, NuVasive is clear,
`
`23 the APA vio -- there's an APA violation if we do not
`
`24 get to introduce evidence to respond to this.
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`19
`
`
` 1 Petitioner's trying to extend the proceeding by
`
` 2 introducing this new evidence in a reply. It's not
`
` 3 the Patent Owner that's trying to do that by citing a
`
` 4 new portion of Misra in its reply.
`
` 5 MR. CAVANAUGH: Your Honor, if I could
`
` 6 just make two points very, very briefly?
`
` 7 One, the Patent Owner --
`
` 8 JUDGE ARBES: Sure. Go ahead, Counsel.
`
` 9 MR. HRYCYSZYN: -- didn't share -- the
`
`10 Patent Owner didn't share NuVasive with us, so we
`
`11 can't comment on its applicability or -- or
`
`12 distinguish it for Your Honors, but -- but we will --
`
`13 will say this, I mean, the fact that they can identify
`
`14 something in the POR that's relevant does indicate
`
`15 that they have had an opportunity to consider and
`
`16 brief this issue. They elected to say that it was a
`
`17 new issue. They elected not to have Doctor Glew
`
`18 testify to it.
`
`19 And so, you know, there's -- there's simply
`
`20 no reason in the -- in the record, and so, you know,
`
`21 their -- their -- their protestations about an APA
`
`22 violation are -- are -- are -- are kind of based on
`
`23 the misunderstanding that somehow there's a new
`
`24 argument here and it's not.
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`20
`
`
` 1 JUDGE ARBES: Okay. I -- I think,
`
` 2 Counsel, we understand the parties' positions --
`
` 3 MR. CAVANAUGH: Okay.
`
` 4 JUDGE ARBES: -- as to whether there was
`
` 5 or -- an improper new argument made or not. We have
`
` 6 the parties' positions on that. We have not made that
`
` 7 -- that decision -- that decision yet, so we don't
`
` 8 need argument on that today, but I believe now we
`
` 9 understand both parties' positions as to whether any
`
`10 additional evidence should be authorized with the
`
`11 sur-reply.
`
`12 So why don't we move on to the second issue
`
`13 in Patent Owner's e-mail.
`
`14 So, Counsel, would you like to explain what
`
`15 you are requesting there and the basis for that?
`
`16 MR. HRYCYSZYN: Yes, Your Honor. So,
`
`17 again, this is Jerry Hrycyszyn.
`
`18 At the oral hearing, Judge Haapala asked a
`
`19 series of questions regarding Figure 1 of the '501
`
`20 patent, whether the statements at Column 3, Lines 32
`
`21 to 34 and -- and other close portions show that the
`
`22 '501 specification treats gate insulating film 5,
`
`23 which is adjacent to sidewall 7, as different films
`
`24 even though they are made of the same material.
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`21
`
`
` 1 This issue was not addressed by either party
`
` 2 or any expert during the proceeding. The issue was
`
` 3 raised for the first time at the oral argument by the
`
` 4 Board.
`
` 5 Our expert, Doctor Glew, has explained to us
`
` 6 that neither this portion of the '501 patent, nor any
`
` 7 other, treats adjacent films that are made of the same
`
` 8 material as different films.
`
` 9 Accordingly, if the Board's going to consider
`
`10 how the '501 patent treats films 5 and 7 in its
`
`11 analysis, we believe it is necessary that the Board
`
`12 hear from the experts, both sides, as to how a POSA
`
`13 would read and understand these portions of the
`
`14 specification.
`
`15 Patent Owner's expert would provide testimony
`
`16 that explains these portions of the spec are
`
`17 consistent with Patent Owner's proposed interpretation
`
`18 of film. Petitioner opposes this request, perhaps
`
`19 because they don't -- they know it does not support
`
`20 their construction.
`
`21 Patent Owner believes that the APA requires
`
`22 that the Patent Owner have the opportunity to respond
`
`23 fully to the arguments, to the extent the Panel
`
`24 contemplates relying on these disclosures and
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`22
`
`
` 1 arguments in its written decision. And NuVasive,
`
` 2 again, is the relevant case there.
`
` 3 JUDGE ARBES: But, Counsel, were -- were
`
` 4 these arguments made by the Petitioner that Patent
`
` 5 Owner wants to respond to or was this just part of the
`
` 6 Panel's inquiry to counsel for both parties at -- at
`
` 7 the hearing?
`
` 8 MR. HRYCYSZYN: Your Honor, these were in
`
` 9 response to the Panel's inquiries during the hearing.
`
`10 JUDGE ARBES: Okay. But you -- you
`
`11 believe that -- that briefing is necessary to further
`
`12 respond to those questions or?
`
`13 MR. HRYCYSZYN: Yes, Your Honor, because,
`
`14 here again, it's processes that are disclosed in the
`
`15 '501 patent and what those processes mean and with
`
`16 respect to the materials.
`
`17 So there are different materials that are
`
`18 disclosed for the gate insulating film and the -- the
`
`19 sidewalls. So they're different materials and that's
`
`20 why we need an expert to explain to the Board how to
`
`21 interpret what the disclosure is and that these are
`
`22 different materials. And that's why they're referred
`
`23 to -- or at least they're not necessarily the same
`
`24 material. There are multiple materials that are
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.com
`
`
`
`Telephonic Hearing - September 26, 2018
`
`23
`
`
` 1 disclosed in the processes that are disclosed
`
` 2 contemplate creating different materials.
`
` 3 JUDGE ARBES: I see.
`
` 4 And that -- that ultimately would support
`
` 5 Patent Owner's proposed interpretation in the case, I
`
` 6 take it?
`
` 7 MR. HRYCYSZYN: Yes, Your Honor. That's
`
` 8 right.
`
` 9 JUDGE ARBES: Okay.
`
`10 MR. HRYCYSZYN: And -- and that same
`
`11 case, NuVasive, even if the Board is raising arguments
`
`12 for the first time that it's considering, we should
`
`13 have an opportunity to introduce evidence to -- to
`
`14 make sure the Board has everything it needs to
`
`15 consider it.
`
`16 JUDGE ARBES: Okay. Counsel for
`
`17 Petitioner, if you'd like to respond?
`
`18 MR. CAVANAUGH: Yes, Your Honor. Thank
`
`19 you. Dave Cavanaugh here.
`
`20 And the -- a couple different points with
`
`21 regard to the Patent Owner's request for really
`
`22 reopening the proceeding.
`
`23 You know, our position is that it should be
`
`24 redect -- rejected. You know that the Patent Owner
`
`O'Brien & Levine Court Reporting Solutions
`888.825.3376 - mail@court-reporting.co
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
