`
`Filed on behalf of Patent Owner by:
`Gerald B. Hrycyszyn, Reg. No. 50,474
`Richard F. Giunta, Reg. No. 36,149
`Edmund J. Walsh, Reg. No. 32,950
`Joshua J. Miller (admitted pro hac vice)
`WOLF GREENFIELD & SACKS, P.C.
`600 Atlantic Ave., Boston, MA 02210-2206
`Tel: 617-646-8000/Fax: 617-646-8646
`
`
`
` Paper No. __
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING CO., LTD,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`IPR2017-018411
`Patent 7,893,501
`____________
`
`PATENT OWNER’S SUR-REPLY
`PURSUANT TO JULY 20, 2018 ORDER (PAPER NO. 26)
`
`
`
`
`
`
`1 Case IPR2017-01842 has been consolidated with this proceeding．
`
`
`
`
`Exhibit
`2001
`
`2002
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`
`2010
`
`2011
`2012
`2013
`2014
`2015
`
`2016
`2017
`2018
`
`2019
`2020
`2021
`2022
`2023
`2024
`
`
`
`APPENDIX LISTING OF EXHIBITS
`
`Description
`Declaration of Joshua J. Miller in Support of Motion for Admission
`Pro Hac Vice
`Exhibit 2002 to the Deposition of Stanley R. Shanfield
`Exhibit 2003 to the Deposition of Stanley R. Shanfield
`Exhibit 2004 to the Deposition of Stanley R. Shanfield
`Exhibit 2005 to the Deposition of Stanley R. Shanfield
`Exhibit 2006 to the Deposition of Stanley R. Shanfield
`Declaration of Alexander D. Glew, Ph.D., P.E.
`Curriculum vitae of Alexander D. Glew, Ph.D., P.E.
`Transcript of the Deposition of Stanley R. Shanfield, Ph.D. (March 27,
`2018)
`Transcript of the Deposition of Stanley R. Shanfield, Ph.D. (March 28,
`2018)
`Excerpts from Webster’s Third New International Dictionary (2002)
`Excerpts from Collins English Dictionary (2000)
`Excerpts from Chambers 21st Century Dictionary (2000)
`U.S. Patent No. 4,578,128 to Mundt et al. (“Mundt”)
`Request for Continued Examination dated March 29, 2010, in U.S.
`Patent Application Serial No. 12/170,191
`U.S. Patent No. 6,437,404 (“Xiang”)
`U.S. Patent No. 6,870,230 (“Matsuda”)
`Office Action dated May 10, 2010, in U.S. Patent Application Serial
`No. 12/170,191
`U.S. Patent No. 3,390,022 (“Fa”)
`Excerpts from McGraw-Hill Dictionary of Scientific and Technical
`Terms (2003)
`Deposition Exhibit 2001 from the Deposition of Stanley R. Shanfield
`Transcript of July 19, 2018 Conference Call
`Reserved
`Sur-reply Declaration of Alexander D. Glew
`
`
`i
`
`
`
`Petitioner cites new Exhibits 1025 (“Agata”) and 1026 (“Rashed”) to
`
`“support” its improper new argument that claim 1’s requirement that “the MISFET
`
`includes: an active region” is met by modified Igarashi Fig. 12 because the region
`
`allegedly bounded by isolation purportedly is a single active region that includes
`
`multiple transistors. Reply, 12 (“an active region can include more than one
`
`transistor.”). Petitioner’s improper new argument fails for multiple reasons.
`
`First, as Dr. Glew explains, Agata and Rashed each discloses a multi-
`
`transistor device and explicitly describes that larger “device” (not a transistor
`
`thereof) as “including” an active region bounded by isolation. Ex. 2024, ¶¶3-5;
`
`Agata at 5:9-18 (“sense amplifier includes … [the] active region 2.”); Rashed at
`
`2:55-56 (“device includes a continuous active region.”). Neither Agata nor Rashed
`
`refers to a MISFET (or other transistor) in the multi-transistor device as
`
`“includ[ing]: an active region” as required by claim 1. Id., ¶¶2-3. Thus, neither
`
`Agata, Rashed, nor any other evidence of record refutes Dr. Glew’s testimony,
`
`which is supported by the ’501 patent and extensive extrinsic evidence, that a
`
`MISFET that “includes an active region” as claimed requires that the active region
`
`be dedicated to that MISFET. Id., ¶¶6-7, 11; Ex. 2007 ¶¶ 67-75 (citing ’501 patent
`
`extensively); Ex. 2007 ¶¶78-85 (citing Woerlee, Kang, Rabaey and Plummer).
`
`Second, Petitioner’s argument that “an active region can include more than
`
`one transistor” (Reply, 12) seeks to rewrite claim 1. Claim 1 does not recite the
`
`
`
`1
`
`
`
`active region as the larger whole that “includes” a transistor. It recites just the
`
`opposite – the “MISFET includes an active region.” Having no answer for the
`
`argument and evidence in the POR that the claim language which recites that the
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`“MISFET includes an active region” is what requires one-to-one correspondence
`
`between a MISFET and the active region it “includes” (POR at 67-74), the
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`Petitioner ignores it entirely. Indeed, Petitioner offers nothing to rebut the
`
`evidence cited by Dr. Glew (Ex. 2007, ¶¶142-47) corroborating his testimony that
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`the plain and ordinary meaning of “includes” “reference[s] a larger whole that
`
`‘contain[s]’ a smaller component whereby the claim requires that ‘the MISFET []
`
`is the larger whole that ‘includes’ the entirety of the active region and not the other
`
`way around.’” Id., ¶142.2 A simple analogy reveals that Dr. Glew’s testimony is
`
`manifestly correct, as the continental United States (“US”) “includes” Virginia, but
`
`Virginia does not “include” the continental US because the continental US is the
`
`larger whole that encompasses areas (other states) that are not part of Virginia.
`
`Petitioner’s argument that “an active region can include more than one
`
`transistor” (Reply, 12) is misleading and irrelevant. Id., ¶6. That the active region
`
`of a multi-transistor device in Agata and Rashed has multiple transistors does not
`
`support an assertion that any of those transistors “includes” the device’s active
`
`
`2 Reply at 20-21 mischaracterizes Dr. Glew’s deposition testimony. Ex. 2024, ¶10.
`
`
`
`2
`
`
`
`region. Id., ¶¶6-7. Agata and Rashed say no such thing. To the contrary, they
`
`explicitly state that it is the larger “device,” to which the active region is dedicated,
`
`that “includes” the active region. Id., ¶¶3-5. Agata and Rashed corroborate Dr.
`
`Glew’s testimony that a structure (whether a multi-transistor device in Agata and
`
`Rashed or a MISFET in the ’501 patent) “includes” an active region only if the
`
`active region is dedicated to the structure that “includes” it. Id. ¶¶ 7-8. No
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`evidence supports an assertion that any transistor in modified Igarashi Fig. 12
`
`“includes” an active region encompassing other transistors. Id., ¶¶6-7.
`
`Third, Petitioner’s assertion that “all functional MOSFET transistors have
`
`an active region” is wrong—an active region must be bounded by isolation and a
`
`transistor can be formed without isolation. Id. ¶ 9; POR at VI.A, VII.C.1.b. While
`
`a transistor must be formed in a region, the ’501 patent is clear that that is a
`
`“formation region,” and only if isolation is provided does the formation region
`
`include a smaller active region. Ex. 2024 ¶9; Ex. 1001 at 3:20-28, Fig. 1.
`
`Fourth, Petitioner’s assertions that interpreting “active region” to
`
`encompass multiple transistors is not “prohibited” or “precluded” (Reply at 6, 10,
`
`12) not only ignore the claimed requirement that the “MISFET includes an active
`
`region,” they also violate the black letter law cited in the POR at 26.
`
`Dated: July 27, 2018
`
`
`
`
`Respectfully submitted,
`Godo Kaisha IP Bridge 1
`By /Richard Giunta /
`Richard F. Giunta, Reg. No. 36,149
`
`3
`
`
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. §42.6 (e)(4)
`
`I certify that on July 27, 2018 I will cause a copy of the foregoing document,
`
`
`
`
`including any exhibits referred to therein, to be served via electronic mail, as
`
`previously consented to by Petitioner, upon the following:
`
`
`
`David L. Cavanaugh
`
`David.Cavanaugh@wilmerhale.com
`
`Dominic.Massa@wilmerhale.com
`
`MichaelH.Smith@wilmerhale.com
`
`
`
`
`
`Dominic E. Massa
`
`Michael H. Smith
`
`
`
`
`
`
`
`
`Date: July 27, 2018
`
`
`
`
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`
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`
`
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`
`
`
`
`
`
`
`
`
`
`/MacAulay Rush/
`MacAulay Rush
`Patent Paralegal
`WOLF GREENFIELD & SACKS, P.C.
`
`
`
`4
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`
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