throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 8
`Entered: December 29, 2017
`
`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 IPR2017-01841
`Case IPR2017-01842
`Case IPR2017-01843
`Case IPR2017-01844
`Patent 7,893,501 B2
`
`Case IPR2017-01861
`Case IPR2017-01862
`Patent 7,265,450 B21
`____________
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`1 This order addresses issues common to all cases; therefore, we issue a
`single order to be entered in each case. The parties may not use this format
`without prior authorization.
`
`

`

`IPR2017-01841; IPR2017-01842; IPR2017-01843; IPR2017-01844
`Patent 7,893,501 B2
`IPR2017-01861; IPR2017-01862
`Patent 7,265,450 B2
`
`
`
`ORDER
`Denying Petitioner’s Request to File Reply to Preliminary Response
`37 C.F.R. § 42.108(c)
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`On December 19, 2017, a conference call was held involving counsel
`for the respective parties2 and Judges Arbes, Fitzpatrick, and Chagnon.
`A court reporter was present for the conference call; Petitioner is directed to
`file a copy of the transcript as an exhibit in each proceeding when it is
`available. We summarize the call herein.
`Petitioner Taiwan Semiconductor Manufacturing Company Ltd.
`requested the conference call with the Board for authorization to file a reply
`to the Preliminary Responses of Patent Owner Godo Kaisha IP Bridge 1.
`Pursuant to 37 C.F.R. § 42.108(c), a “petitioner may seek leave to file a
`reply to the preliminary response,” and “[a]ny such request must make a
`showing of good cause.”
`Petitioner contends there is good cause for a reply because Patent
`Owner has taken claim construction positions in the Preliminary Responses
`that are inconsistent with positions taken by Patent Owner in its
`infringement contentions in the co-pending district court litigation.
`According to Petitioner, Patent Owner’s claim construction positions were
`not foreseeable, and it would benefit the Board and the parties to have
`
`
`2 Although different counsel is representing Petitioner in the various
`proceedings, a single conference call was held due to the similar nature of
`the requests in each proceeding.
`
`

`

`IPR2017-01841; IPR2017-01842; IPR2017-01843; IPR2017-01844
`Patent 7,893,501 B2
`IPR2017-01861; IPR2017-01862
`Patent 7,265,450 B2
`
`
`additional briefing in order to assist the Board in properly construing the
`claims.
`Patent Owner disagrees, and argues that Petitioner had access to the
`infringement contentions before the Petitions were filed. According to
`Patent Owner, Petitioner should have addressed the district court
`infringement contentions in the Petitions if Petitioner thought they were
`relevant to claim construction issues in these proceedings. Patent Owner
`further disagrees that its positions are inconsistent.
`Having considered the matter and as discussed during the conference
`call, we determine Petitioner has not shown good cause for further briefing
`on the claim construction issues in these proceedings. The Board has the
`infringement contentions alleged to be inconsistent with Patent Owner’s
`arguments in the Preliminary Responses.3 Both parties have had the
`opportunity to present their proposed claim constructions, and therefore we
`see no need for further briefing at this stage. The panel is capable of
`reviewing the record and applying the broadest reasonable construction to
`the claim terms.
`
`
`3 The parties indicated that the relevant infringement contentions are of
`record in IPR2017-01861 and IPR2017-01862 (see, e.g., Ex. 1024, 31–36,
`63–66), but are not of record in IPR2017-01841, IPR2017-01842,
`IPR2017-01843, and IPR2017-01844. Petitioner in IPR2017-01841,
`IPR2017-01842, IPR2017-01843, and IPR2017-01844 shall file the
`infringement contentions as an exhibit in each of those proceedings, as set
`forth in the Order.
`
`

`

`IPR2017-01841; IPR2017-01842; IPR2017-01843; IPR2017-01844
`Patent 7,893,501 B2
`IPR2017-01861; IPR2017-01862
`Patent 7,265,450 B2
`
`
`
`In consideration of the foregoing, it is:
`ORDERED that Petitioner’s request, in each proceeding, for
`authorization to file a Reply to Patent Owner’s Preliminary Response is
`denied;
`FURTHER ORDERED that Petitioner shall file the transcript of the
`conference call as an exhibit in each proceeding; and
`FURTHER ORDERED that Petitioner in IPR2017-01841,
`IPR2017-01842, IPR2017-01843, and IPR2017-01844 shall file the
`infringement contentions as an exhibit in each of those proceedings, no later
`than January 12, 2018.
`
`
`

`

`IPR2017-01841; IPR2017-01842; IPR2017-01843; IPR2017-01844
`Patent 7,893,501 B2
`IPR2017-01861; IPR2017-01862
`Patent 7,265,450 B2
`
`
`IPR2017-01841; IPR2017-01842; IPR2017-01843; IPR2017-01844
`PETITIONER:
`David H. Cavanaugh
`Dominic E. Massa
`Michael H. Smith
`WILMER CUTLER PICKERING HALE AND DORR LLP
`David.Cavanaugh@wilmerhale.com
`Dominic.Massa@wilmerhale.com
`MichaelH.Smith@wilmerhale.com
`
`
`IPR2017-01861; IPR2017-01862
`PETITIONER:
`Lori A. Gordon
`Christian A. Camarce
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`Lgordon-PTAB@skgf.com
`Ccamarce-PTAB@skgf.com
`
`
`PATENT OWNER:
`Gerald B. Hrycyszyn
`Richard F. Giunta
`Edmund J. Walsh
`WOLF, GREENFIELD & SACKS, P.C.
`GHrycyszyn-PTAB@wolfgreenfield.com
`RGiunta-PTAB@wolfgreenfield.com
`EWalsh-PTAB@wolfgreenfield.com
`
`

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