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` Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`TAIWAN SEMICONDUCTOR MANUFACTURING CO., LTD,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`IPR2017-018411
`Patent 7,893,501
`____________
`
`PATENT OWNER’S MOTION FOR
`OBSERVATIONS ON CROSS-EXAMINATION
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`
`
`1 Case IPR2017-01842 has been consolidated with this proceeding. See Paper 10 at
`3．
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`Godo Kaisha IP Bridge 1 (“Patent Owner”) submits this motion for
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`observations regarding the cross-examination of Petitioner’s expert (“Shanfield”).
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`I.
`SHANFIELD TESTIMONY REGARDING ACTIVE REGION
`Observation #1: In Ex. 2026 at 95:4-96:18, Shanfield admitted that his “proposed
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`construction for the ’501 patent [is] that an active region made of a semiconductor
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`substrate is an area of the semiconductor substrate defined by an isolation region
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`where the transistor is formed”2 and at 88:10-89:7, 92:9-14 he admitted that both
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`“bounded” and “defined” are used by him to indicate that the active region is
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`surrounded on all sides by isolation. This testimony is relevant to Petitioner’s
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`Reply (Paper 22) at 5, where Petitioner states that it “does not agree with PO’s
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`construction as PO interprets it.” This testimony is relevant because it shows that
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`the parties have the same construction for the claim term “an active region made of
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`a semiconductor substrate” and that Petitioner’s expert offers the same
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`construction as Patent Owner’s expert (“Dr. Glew”) for the claim term “an active
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`region made of a semiconductor substrate.”
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`Observation #2: In Ex. 2026 at 84:18-86:12 and 95:4-96:18, respectively,
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`Shanfield admitted that “you can have a transistor without an isolation region” as
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`of the priority date of the ’501 patent and that his “proposed construction for the
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`’501 patent [is] that an active region made of a semiconductor substrate is an area
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`2 Emphasis added unless noted otherwise.
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`1
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`of the semiconductor substrate defined by an isolation region where the transistor
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`is formed.” This testimony is relevant to page 13 of the Reply where Petitioner
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`asserts that Dr. Glew’s statement that “semiconductor devices have been made
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`without isolation regions … [is] misleading.” This testimony is relevant to show
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`that Dr. Glew’s statement is not misleading because both experts agree that
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`transistors without isolation existed as of the priority date of the ’501 patent and,
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`thus, such transistors would not satisfy the “active region” limitation of claim 1 as
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`construed by both parties (see Observation #1).
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`Observation #3: The same testimony cited in Observation #2 (Ex. 2026 at 84:18-
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`86:12 and 95:4-96:18, where Shanfield admitted that “you can have a transistor
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`without an isolation region” as of the priority date of the ’501 patent and that his
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`“proposed construction for the ’501 patent [is] that an active region made of a
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`semiconductor substrate is an area of the semiconductor substrate defined by an
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`isolation region where the transistor is formed.”) also is relevant to page 10 of the
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`Reply where Petitioner states “all functional MOSFET transistors have an active
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`region and Dr. Glew cites no evidence to the contrary.” This testimony is relevant
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`because it confirms that Dr. Glew’s testimony that transistors without isolation do
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`not have an active region as required by claim 1 of the ’501 patent is correct
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`(because the parties’ proposed construction requires that the active region is
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`defined by isolation region - see Observations #1-2), and establishes that Shanfield
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`2
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`agrees with Dr. Glew (and thus provides “evidence to the contrary” of the Reply)
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`that functional MOSFETs need not have an active region.
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`Observation #4: The same testimony cited in Observation #2 (Ex. 2026 at 84:18-
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`86:12 and 95:4-96:18, where Shanfield admitted that “you can have a transistor
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`without an isolation region” as of the priority date of the ’501 patent and that his
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`“proposed construction for the ’501 patent [is] that an active region made of a
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`semiconductor substrate is an area of the semiconductor substrate defined by an
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`isolation region where the transistor is formed.”) also is relevant to page 14 of the
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`Reply where Petitioner states “even transistors that do not use isolation regions …
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`still have active regions … [because] the absence of an isolation region does not
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`signify the absence of an active region.” This testimony is relevant because it
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`directly refutes that argument in the Reply and establishes that the absence of an
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`isolation region does signify the absence of an active region as used in the ’501
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`patent as acknowledged by the parties’ agreed construction which requires that the
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`active region is defined by isolation (see Observations #1-3).
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`SHANFIELD’S TESTIMONY REGARDING FORMATION REGION
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`II.
`Observation #5: In Ex. 2026 at 97:10-99:15, Shanfield testified that the
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`“formation region” of a transistor as that term is used in the ’501 patent does not
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`include the isolation region because, in his opinion, “[t]hat’s not where the
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`transistor is being formed” even though he admitted that the formation region Rn
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`3
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`of the transistor (identified with an Rn bracket in Figure 1) is shown in the ’501
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`patent as including the isolation region. This testimony is relevant to Ex. 2026 at
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`105:14-106:18 where Shanfield later testified that the active region is at least as big
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`or bigger than the formation region as those terms are used in the ’501 patent. This
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`testimony is relevant because it shows that Shanfield’s assertion that the active
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`region is bigger than the formation region is based upon an interpretation of
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`“formation region” that is contradicted by the ’501 patent itself, which describes
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`the “formation region” as larger than the active region because the formation
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`region also includes the isolation region that bounds the active region. Compare in
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`Figure 1 of the ’501 formation region bracket Rn with active region 1a; see also
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`’501 patent 6:62-7:4 (stating that Figure 2B shows that film 8x is “left only on the
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`nMISFET formation region Rn” and Figure 2B shows that 8x is on the isolation
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`region 2).
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`Observation #6: In Ex. 2026 at 97:10-99:15, Shanfield admitted that the formation
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`region Rn of the transistor (identified with an Rn bracket in Figure 1) is shown in
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`the ’501 patent as including the isolation region 2. This is relevant to paragraph 10
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`of Shanfield’s Reply Declaration where he asserts that “There is nothing in the
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`’501 patent … that requires each transistor to be isolated from any other
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`transistor.” This testimony is relevant because it refutes Shanfield’s assertion that
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`nothing in the ’501 patent requires that each transistor be isolated from other
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`4
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`transistors, by acknowledging the teachings in the ’501 patent that the “formation
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`region” of each MISFET includes isolation.
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`III. SHANFIELD’S TESTIMONY ON WHETHER IGARASHI FIGURE
`12 HAS ONE ACTIVE REGION OR TWO
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`Observation #7: In Ex. 2026 at 112:1-113:21, Shanfield admitted that, at his prior
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`deposition, he testified three times in a row (Ex. 2009 at 91:12-93:10) that there
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`were two active regions (not one) in Petitioner’s modified Igarashi Figure 12. This
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`testimony is relevant to paragraph 29 of Shanfield’s Reply Declaration where he
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`asserts that “A [POSA] would have viewed the region between the two STI in
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`[modified] Igarashi … as an [singular] active region.” This testimony is relevant
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`because it shows that Shanfield’s testimony regarding the location or size of active
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`regions during the course of this trial has been inconsistent, changed repeatedly,
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`and is thus unreliable.
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`Observation #8: In Ex. 2026 at 116:22-118:22, Shanfield reviewed his prior
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`deposition transcript starting at page 93 of Exhibit 2009 and, after searching over
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`40 pages of testimony that followed his identification of two active regions in
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`Petitioner’s modified Igarashi Figure 12, he was unable to identify where he
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`allegedly corrected his testimony to say that there was one active region. This
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`testimony is relevant to Ex. 2026 at 112:4-11 where Shanfield testified that he
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`“misspoke” when he testified that there were two active regions and that he
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`remembered “quickly correct[ing] myself on that point … after thinking about it
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`5
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`for a minute.” This testimony is relevant because it directly refutes Shanfield’s
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`assertion that he misspoke and quickly corrected himself, and demonstrates that his
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`testimony is inconsistent and unreliable.
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`Observation #9: In Ex. 2026 at 147:13-148:3, Shanfield testified, in response to
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`questions by Petitioner’s counsel objected to as leading, that at his prior deposition,
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`after he had identified three times in a row that there were two active regions in
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`Petitioner’s modified Igarashi Figure 12 (Ex. 2009 at 91:12-93:10), when he later
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`referred to “two regions” at 93:16-20 in Ex. 2009, this was not an additional
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`statement that there were two active regions, but instead was somehow a purported
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`“correction” of his earlier testimony because he meant that there were two regions
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`in a single active region. This testimony is relevant to Ex. 2026 at 112:4-11 where
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`Shanfield testified that he “misspoke” when he testified that there were two active
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`regions and that he remembered “quickly correct[ing] myself on that point … after
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`thinking about it for a minute.” This testimony is relevant because it establishes
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`that Shanfield did not in fact “correct” his prior testimony identifying two active
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`regions in Ex. 2009 at 93:16-20 (which uses language consistent with his language
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`at 91:12-93:10), that his alleged “correction” occurred in testimony (Ex. 2009 at
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`93:16-20) that he himself did not identify when asked by Patent Owner’s counsel
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`where such correction allegedly occurred even though he starting looking for the
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`purported correction in Exhibit 2009 at page 93 (Ex. 2026 at 117:23-118:8), and
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`6
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`that Shanfield only identified Exhibit 2016 at 93:16-20 as an alleged “correction”
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`after being improperly led by Petitioner’s counsel’s leading questions, which lays
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`bare that Shanfield did not “quickly correct himself” or “misspeak”—he provided
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`inconsistent and unreliable testimony.
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`Observation #10: In Ex. 2026 at 123:7-15, Shanfield testified that it “was apparent
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`to me at this point … [that] it didn’t matter anyway whether there was one, two ,
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`or five active regions [because] [t]he prior art still met the claim limitation.” This
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`testimony is relevant to the Patent Owner Response at page 61 (where Patent
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`Owner argued that the Petition failed to identify the boundaries of the alleged
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`active region in Igarashi Fig. 12) and paragraph 29 of Shanfield’s Reply
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`Declaration where he asserts that “A [POSA] would have viewed the region
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`between the two STI in [modified] Igarashi … as an active region.” This
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`testimony is relevant because it shows that Shanfield doesn’t believe that the
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`number of active regions is relevant and that it is unnecessary to determine the
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`boundaries of the alleged “active region” in Petitioner’s modified Igarashi Figure
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`12, and confirms Patent Owner’s position that the Petition and Shanfield’s original
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`declaration filed with it failed to demonstrate where an “active region” as claimed
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`is found in modified Igarashi Fig. 12.
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`Observation #11: In Ex. 2026 at 123:18-124:18 Shanfield testified that he
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`couldn’t answer at his prior deposition whether there was one or more active
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`7
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`regions located between the STI boxes in Petitioner’s modified Igarashi Figure 12
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`and that he “still can’t answer it” because he “can’t tell from Igarashi’s drawing as
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`portrayed.” This testimony is relevant to paragraph 29 of Shanfield’s Reply
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`Declaration where he asserts that “A [POSA] would have viewed the region
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`between the two STI in [modified] Igarashi … as an active region.” This
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`testimony is relevant because it contradicts the testimony in paragraph 29 of
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`Shanfield’s Reply Declaration testimony, and shows that Shanfield cannot
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`determine whether there is only one, or more than one, active region in Petitioner’s
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`modified Igarashi Figure 12.
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`Observation #12: In Ex. 2026 at 125:13-126:11, Shanfield testified that the
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`ellipses in Petitioner’s modified Igarashi Figure 12 prevented him from
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`determining whether there was one or more than one active region and that the
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`figure had not changed for his Reply Declaration. This testimony is relevant to
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`paragraph 29 of Shanfield’s Reply Declaration where he asserts that “A [POSA]
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`would have viewed the region between the two STI in [modified] Igarashi … as an
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`active region.” This testimony is relevant because it contradicts the testimony in
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`paragraph 29 of Shanfield’s Reply Declaration, and shows that despite the fact that
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`Petitioner itself added the ellipses to the figure and Shanfield embraced the figure
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`by using it in his declaration, he still cannot determine whether there is one or
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`more than one active region in Petitioner’s modified Igarashi Figure 12.
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`8
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`Observation #13: In Ex. 2026 at 126:21-127:18, Shanfield immediately and
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`without any qualifications agreed that boxes A and B in exhibit 2023 are in one
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`active region. This testimony is relevant to his prior deposition testimony relating
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`to his original declaration (Ex. 2010 at 414:8-416:17), where Shanfield was unable
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`to answer the same question about boxes A and B in exhibit 2005 (stating “that
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`isn’t … a question I considered and that I believe was relevant to understanding
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`claim 1”). This testimony is relevant because it demonstrates that at the reply stage
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`Shanfield readily addressed an issue he did not address in his original declaration
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`and that he testified that he was unable to answer before Patent Owner filed its
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`POR, further demonstrating that Shanfield’s testimony is unreliable.
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`IV. SHANFIELD’S TESTIMONY ABOUT WHETHER CLAIM 1 OF
`THE ’501 PATENT REQUIRES THAT “A SILICON NITRIDE
`FILM” IMPART STRESS TO THE SUBSTRATE
`Observation #14: In Ex. 2026 at 56:17-58:2 and 160:20-23, Shanfield testified
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`that claim 1 requires that the silicon nitride film induce stress in the substrate and,
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`at 45:3-18, testified that an etch stop layer cannot induce stress. This testimony is
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`relevant to Shanfield’s original declaration (Ex. 1002) at paragraphs 48 and 131,
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`where Shanfield testified that silicon nitride layer 8 in Igarashi is an etch stop layer
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`and that element 8 meets the requirements of the silicon nitride film limitation.
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`This testimony is relevant because it directly contradicts the testimony in
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`Shanfield’s original declaration that Igarashi’s etch stop silicon nitride layer 8
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`9
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`meets the silicon nitride film in claim 1, because Igarashi’s layer 8 does not induce
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`stress which Shanfield alleges is required by claim 1 in the cited testimony.
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`Observation #15: In Ex. 2026 at 160:20-23, Shanfield reverted to his testimony
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`that claim 1 “requires that the silicon nitride film induce stress” in the substrate
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`(Ex. 2026 at 56:17-58:2). This testimony is relevant to Ex. 2026 at 144:1-12 and
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`145:1-147:8, where in response to improper leading questions from Petitioner’s
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`counsel, Shanfield testified that claim 1 did not require that the silicon nitride film
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`induce stress in the substrate. This testimony is relevant because it reveals that
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`once Petitioner’s counsel stopped asking improper leading questions, Shanfield
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`reverted to his own (albeit incorrect) testimony that claim 1 requires that the silicon
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`nitride film induce stress in the substrate, and demonstrates that Shanfield’s
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`testimony is unreliable because he freely changed his testimony to conform with
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`the answers Petitioner’s counsel sought even though he had not changed what he
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`believed was the correct answer.
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`Observation #16: In Ex. 2026 at 167:14-173:3, 173:10-178:4, Shanfield testified
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`that claim 1 does not require that the silicon nitride film induce stress in the
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`substrate. This testimony is relevant to Ex. 2026 at 56:17-58:2 and 160:20-23
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`where Shanfield repeatedly and consistently testified that claim 1 requires that the
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`silicon nitride film induce stress in the substrate. This testimony is relevant
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`because it demonstrates that Shanfield’s testimony is unreliable and that he
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`10
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`changed it only in response to Petitioner’s counsel’s improper leading questions,
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`instructions, and coaching.
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`Observation #17: In Ex. 2026 at 144:1-12 and 145:1-147:8, Shanfield testified
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`that claim 1 did not require that the silicon nitride film induce stress in the
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`substrate and therefore, an etch stop layer could satisfy the silicon nitride film
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`limitation. This testimony is relevant to Ex. 2026 at 45:3-18 where Shanfield
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`testified that an etch stop layer cannot induce stress and thus cannot satisfy the
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`silicon nitride film limitation (Ex. 2026 56:17-58:2 and 160:20-23). This
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`testimony is relevant because it demonstrates that Shanfield’s testimony is
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`unreliable and that he changed it only in response to Petitioner’s counsel’s
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`improper leading questions, instructions, and coaching.
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`Dated: August 9, 2018
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`Respectfully submitted,
`Godo Kaisha IP Bridge 1
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`By /Joshua J. Miller /
`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
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`11
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. §42.6 (e)(4)
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`I certify that on August 9, 2018 I will cause a copy of the foregoing
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`document, including any exhibits referred to therein, to be served via electronic
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`mail, as previously consented to by Petitioner, upon the following:
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`
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`David L. Cavanaugh
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`David.Cavanaugh@wilmerhale.com
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`Dominic.Massa@wilmerhale.com
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`MichaelH.Smith@wilmerhale.com
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`Dominic E. Massa
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`Michael H. Smith
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`Date: August 9, 2018
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`/MacAulay Rush/
`MacAulay Rush
`Patent Paralegal
`WOLF GREENFIELD & SACKS, P.C.
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`12
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