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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
`
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING CO., LTD,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`IPR2017-018411
`Patent 7,893,501
`____________
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`PURSUANT TO 37 C.F.R. §42.64(C)
`
`
`
`1 Case IPR2017-01842 has been consolidated with this proceeding. See Paper 10 at
`3．
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`
`
`I.
`
`II.
`
`B.
`
`C.
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`D.
`
`III.
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`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`A.
`Rashed Is Not Prior Art ......................................................................... 1
`B.
`Deposition Testimony Elicited Via Improper Leading and
`Coaching Should Be Excluded .............................................................. 2
`RASHED AND THE RELATED DISCUSSION IN EXHIBIT 1027
`SHOULD BE EXCLUDED BECAUSE RASHED IS NOT PRIOR
`ART ................................................................................................................. 3
`SHANFIELD’S IMPROPERLY COACHED DEPOSITION
`TESTIMONY SHOULD BE EXCLUDED .................................................... 5
`A.
`Shanfield’s Uncoached Testimony Regarding Claim 1 and Etch
`Stop Layers Contradicts the Petition ..................................................... 7
`The Testimony Resulting from Petitioner’s Counsel’s Leading
`Questions on Re-Direct Should be Excluded ........................................ 9
`Shanfield’s Testimony Elicited In Response to Petitioner’s
`Counsel’s Leading, Directing and Coaching During Re-
`Redirect Also Should Be Excluded ..................................................... 12
`Patent Owner Did Not Waive Its Objections to the Improper
`Leading Questions, Instructions, and Coaching .................................. 15
`IV. CONCLUSION .............................................................................................. 15
`
`
`
`
`
`
`i
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`
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`TABLE OF AUTHORITIES
`
`
`CASES
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
`381 F.3d 1111 (Fed. Cir. 2004) .............................................................................. 4
`
`Libman Co. v. Quickie Mfg. Corp.,
`74 F. App’x 900 (Fed. Cir. 2003) ........................................................................... 5
`
`Merck Sharp & Dohme Corp. v. Wyeth,
`IPR2017-00390, Paper No. 62 (PTAB June 8, 2018) ............................................ 4
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .............................................................................. 5
`
`Universal Remote Control v. Universal Elecs.,
`IPR2014-01146 Paper No. 36 (PTAB Dec. 10, 2015) ................................. passim
`
`RULES
`
`37 C.F.R. § 42.64(c) ................................................................................................... 1
`
`37 C.F.R.§ 42.64(b)(1) ............................................................................................... 2
`
`Fed. R. Evid. 401 ....................................................................................................... 5
`
`Fed. R. Evid. 402 ....................................................................................................... 5
`
`Fed. R. Evid. 403 ....................................................................................................... 5
`
`Fed. R. Evid. 611(c) .................................................................................... 2, 3, 7, 14
`
`REGULATIONS
`Trial Practice Guide,
`77 Fed. Reg. 48756 (Aug. 14, 2012) ...................................................................... 7
`
`
`
`
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`
`
`ii
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`I.
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`INTRODUCTION
`
`Patent Owner moves to exclude two types of evidence. First, Petitioner
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`offered Exhibit 1026 (U.S. Patent No. 8,618,607, “Rashed”) as “prior art” to
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`purportedly establish how a disputed term would have been understood in the
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`relevant timeframe before the ’501 patent was filed, but it demonstrably is not
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`prior art to the ’501 patent. Rashed and the testimony of Petitioner’s expert that
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`relied on it should be excluded as irrelevant. Second, during redirect (and re-
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`redirect) of its expert, Petitioner’s counsel blatantly led and coached the witness to
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`change the testimony he offered under cross-examination. The testimony
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`Petitioner elicited through improper leading and coaching should be excluded.
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`A. Rashed Is Not Prior Art
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`Under 37 C.F.R. § 42.64(c), Patent Owner moves to exclude Rashed and
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`portions of Petitioner’s expert’s reply declaration that rely on Rashed (Exhibit
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`1027 at ¶¶18, 29), because Petitioner alleges that Rashed is relevant “prior art” in
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`this proceeding, but Rashed is demonstrably not prior art to the ’501 patent.
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`In Exhibit 1027 at ¶¶17-18, Petitioner’s expert (“Shanfield”) mistakenly
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`identifies Rashed as prior art to the ’501 patent and relies on Rashed as describing
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`what was purportedly known in the art at the time the ’501 patent was filed. In
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`fact, Rashed was filed in 2012—more than 9 years after the priority date of the
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`
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`1
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`
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`’501 patent—and is not prior art to the ’501 patent. Thus, Rashed is not relevant
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`to establishing what was known in the art in the relevant time frame.
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`Patent Owner timely served and filed objections to this evidence in
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`accordance with 37 C.F.R.§ 42.64(b)(1) on July 14, 2018. Paper No. 23.
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`Petitioner served no supplemental evidence in response, and failed to provide any
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`evidence explaining how or why a 2012 reference could be relevant to the
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`understanding of the state of the art nine years earlier in 2003. Rashed and Exhibit
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`1027 at ¶¶18, 29, which improperly rely upon it as prior art, should be excluded.
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`B. Deposition Testimony Elicited Via Improper Leading and
`Coaching Should Be Excluded
`
`During redirect (and re-redirect) at Shanfield’s deposition on his reply
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`declaration, Petitioner’s counsel improperly led and coached Shanfield by
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`providing express and direct instructions to Shanfield during questioning. Ex.
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`2026 at 144:1-12, 145:1-147:8, 167:14-173:3, 173:10-178:4. This improper
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`coaching and leading prompted Shanfield to directly alter the testimony he had
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`given under cross-examination. See § III below.
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`The testimony elicited via improper leading and coaching should be
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`excluded pursuant to Fed. R. Evid. 611(c). E.g., Universal Remote Control v.
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`Universal Elecs., IPR2014-01146 Paper No. 36 at 6-7 (PTAB Dec. 10, 2015)
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`(excluding re-direct examination, finding the questions were leading because they
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`“contained contextual cues sufficient to suggest the answer that counsel desired to
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`
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`2
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`
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`elicit.”). Shanfield’s willingness to completely alter his testimony in response to
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`improper coaching should be considered in judging the credibility of all his
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`testimony in this proceeding, but more is required. In addition to the Trial Practice
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`Guide’s strict prohibition on coaching witnesses, Fed. R. Evid. 611(c) requires
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`exclusion of the deposition testimony because it was influenced by the improper
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`leading questions, coaching and instructions.
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`II. RASHED AND THE RELATED DISCUSSION IN EXHIBIT 1027
`SHOULD BE EXCLUDED BECAUSE RASHED IS NOT PRIOR ART
`
`To “support” its improper new claim construction argument that “an active
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`region can include more than one transistor,” Petitioner cites Rashed. Reply at 12-
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`13; see also Patent Owner’s Identification of Improper New Argument in
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`Petitioner’s Reply (Paper No. 27), item number 4. Petitioner asserts that Rashed is
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`relevant because it is an “example[] in the prior art” and “acknowledges [w]hat the
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`prior art teaches.” Reply at 11-13. Shanfield, without explanation or support,
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`parrots verbatim Petitioner’s assertion (Ex. 1027 at ¶¶ 17-18). But contrary to
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`Petitioner’s and Shanfield’s statements, Rashed unequivocally is not prior art
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`because it was not filed until July 2, 2012—more than nine years after the June
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`16, 2003 priority date of the ’501 patent. Compare ’501 patent with Rashed.
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`It is black letter law that claim construction “accord[s] a claim the meaning
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`it would have to a person of ordinary skill in the art at the time of the invention.”
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`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116
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`
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`3
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`
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`(Fed. Cir. 2004).2 Accordingly, Rashed should be excluded as legally irrelevant
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`because it is not prior art to the ’501 patent.
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`Similarly, Rashed’s reference to an “illustrative prior art device” does not
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`establish that the identified device was prior art to the ’501 patent. See Ex. 1026 at
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`1:45-51. Petitioner offered no evidence that Rashed’s reference to an undated,
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`unidentified device that was “prior art” to Rashed in 2012 describes a device that
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`was available as of June 16, 2003 and was prior art to the ’501 patent, which is
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`what is relevant for this trial.
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`Given that Petitioner and its expert Shanfield failed to even acknowledge
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`that Rashed was filed in 2012, they failed to provide any evidence or explanation
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`establishing that Rashed’s 2012 teachings are relevant to the 2003 timeframe of the
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`’501 patent. Ex. 1027 at ¶¶ 17-18. Due to this failure of proof, “Petitioner has not
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`established that [Rashed] is relevant regarding the knowledge of those skilled in
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`the art at the time of the invention” which was more than 9 years earlier. See
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`Merck Sharp & Dohme Corp. v. Wyeth, IPR2017-00390, Paper No. 62 at 66
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`(PTAB June 8, 2018) (agreeing with patent owner that petitioner had not
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`established that a 2014 reference was relevant to petitioner’s “arguments relating to
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`the state of the art at the time of the invention” in 2006).
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`Thus, Rashed should be excluded because it is not relevant (Fed. R. Evid.
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`2 Emphasis supplied unless noted otherwise.
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`4
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`
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`401 and 402) to understanding the claim language or the state of the art as of the
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`priority date of the ’501 patent. See id. at 66-67 (finding a 2014 reference was
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`“not available to establish what was known in the art at the time of the invention
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`[in 2006]”); see also Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
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`(“[T]the ordinary and customary meaning of a claim term is the meaning that the
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`term would have to a person of ordinary skill in the art … as of the effective filing
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`date of the patent application.”); see also Libman Co. v. Quickie Mfg. Corp., 74 F.
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`App’x 900, 904 (Fed. Cir. 2003) (holding dictionary “contemporaneous with the . .
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`. filing date of the [ ] patent” was “indicator of claim meaning”).
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`Given the lack of relevance, the prejudice that would arise if the Board
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`considers Rashed and Shanfield’s related testimony substantially outweighs any
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`potential probative value and further warrants exclusion under Fed. R. Evid. 403.
`
`III. SHANFIELD’S IMPROPERLY COACHED DEPOSITION
`TESTIMONY SHOULD BE EXCLUDED
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`Shanfield’s declarations (Exs. 1002 and 1027) are near verbatim copies of
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`Petitioner’s arguments in the Petition and Reply, respectively. But Shanfield’s
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`own opinions offered during cross-examination contradict Petitioner’s arguments.
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`Faced with this, Petitioner’s counsel improperly coached, instructed and led
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`Shanfield on redirect (and re-redirect) to elicit testimony consistent with the
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`arguments in the Petition. The improperly elicited testimony should be excluded.
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`5
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`
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`At deposition, Shanfield opined that claim 1 “requires that the [claimed]
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`silicon nitride film induce stress” in the substrate. Exhibit 2026 at 160:20-23; see
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`also id. at 56:17-58:2. He further testified that an etch stop layer cannot induce
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`stress. Exhibit 2026 at 45:3-18. Taken together, these two opinions contradict the
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`arguments in the Petition at 17 and 60 (copied in Shanfield’s declaration at Ex.
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`1002 at ¶¶48, 131) that Igarashi’s silicon nitride layer 8, which is an etch stop
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`layer, meets the claimed silicon nitride layer.
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`On redirect and re-redirect, Petitioner’s counsel led, coached, and even
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`instructed Shanfield, leading him to directly contradict his earlier testimony that
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`claim 1 requires that the silicon nitride film impart stress and that an etch stop layer
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`cannot satisfy the silicon nitride film limitation. See §III.B-C below.
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`Shanfield’s deposition revealed that he signed declarations, largely parroting
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`Petitioner’s arguments, and offered opinions about claim interpretation, even
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`though he “didn’t know” the legal principles necessary to properly interpret the
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`claims. Ex. 2026 at 167:14-21. Indeed, Shanfield “needed to be instructed on”
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`those principles (id. at 167:14-21, 173:1-3), not before offering those opinions, but
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`12 months after he filed his original declaration that included those opinions.
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`That Shanfield rubber-stamped Petitioner’s arguments and offered opinions
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`without—by his own admission—knowing basic legal principles necessary to offer
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`those opinions, and his willingness to directly contradict his earlier sworn
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`6
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`
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`testimony in response to coaching by Petitioner’s counsel, undoubtedly impugn the
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`credibility of all his testimony in these proceedings. But more is required. The
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`specific testimony prompted by improper coaching, leading and instructing is
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`inadmissible and should be excluded under Fed. R. Evid. 611(c). See e.g.,
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`Universal Remote Control, IPR2014-01146 Paper No. 36 at 6-7 (excluding re-
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`direct examination, finding the questions were leading); see also Trial Practice
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`Guide, 77 Fed. Reg. 48756 at 48772 (Appendix D: Testimony Guidelines)
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`(“coaching of witnesses in proceedings before the Board [is] strictly prohibited.”).
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`Petitioner had Shanfield sign declarations that largely repeat Petitioner’s
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`arguments without ensuring that he knew the legal principles that were necessary
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`to understand claim 1 of the ’501 patent and the opinions included in his
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`declarations. Petitioner must live with the consequences, and cannot at deposition
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`lead, coach and instruct Shanfield on how to give the answers needed to support
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`Petitioner’s arguments. The improperly elicited testimony (Exhibit 2026 at 144:1-
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`12, 145:1-147:8, 167:14-173:3, 173:10-178:4) should be excluded.
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`A.
`
`Shanfield’s Uncoached Testimony Regarding Claim 1 and Etch
`Stop Layers Contradicts the Petition
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`During cross-examination, Shanfield testified that in his opinion, the silicon
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`nitride film in claim 1 must induce stress because “a person of skill in the art
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`would interpret [the claimed] silicon nitride film as delivering nonnegligible stress
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`to the substrate.” Exhibit 2026 at 56:17-58:2. Shanfield explicitly confirmed that
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`7
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`
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`“Yes” it was his “understanding that Claim 1 of the ’501 patent requires that the
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`silicon nitride film induce stress.” Exhibit 2026 at 160:20-23.
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`Shanfield also testified that a silicon nitride film as “an etch stop layer”
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`would deliver only “[n]egligible stress in the context of the ’501.” Exhibit 2026 at
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`54:10-15. Shanfield testified that in his opinion “an etch stop layer … [is] very
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`thin … so thin that it doesn’t affect the stress fields.” Exhibit 2026 at 45:3-18.
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`These opinions offered during cross-examination contradict portions of
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`Shanfield’s initial declaration that repeat nearly verbatim arguments in the Petition.
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`Shanfield’s opening declaration asserted that Igarashi’s silicon nitride film 8 is an
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`“etch stop layer[]” and satisfies the silicon nitride film limitation of claim 1. Ex.
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`1002 ¶¶48, 131; see also Petition at 17 and 60. But at deposition, Shanfield
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`testified that the claimed silicon nitride film must induce stress, and that an etch
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`stop layer does not induce stress. Compare Ex. 1002 ¶¶48, 131 with Exhibit 2026
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`at 45:3-18, 56:17-58:2, 160:20-23.
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`To be clear, Patent Owner does not agree with Shanfield’s testimony under
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`cross-examination that claim 1 requires that the silicon nitride film induce stress.
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`But that was his un-coached deposition testimony and it should stand. It was
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`improper for Petitioner’s counsel to lead, coach, and instruct Shanfield on how to
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`“clean-up” his earlier testimony that contradicts the Petition and demonstrated a
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`fundamental misunderstanding of basic claim interpretation principles.
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`8
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`B.
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`The Testimony Resulting from Petitioner’s Counsel’s Leading
`Questions on Re-Direct Should be Excluded
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`When Shanfield opined that claim 1 requires that the silicon nitride film
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`impart stress, dependent claims had not been discussed in the deposition. Ex. 2026
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`at 56:17-58:2. Thus, Shanfield provided his un-coached (albeit incorrect) opinion
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`that claim 1 requires stress based on his review of claim 1 and his understanding of
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`the specification. Id. Indeed, at his earlier deposition, Shanfield testified that “he
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`hadn’t considered claim 2” and was not able to answer whether “claim 2 require[s]
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`that the silicon nitride film generate a stress.” Ex. 2010 at 230:15-231:7.
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`On re-direct, Petitioner’s counsel introduced dependent claims through
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`leading questions that clearly indicated to Shanfield that he should recant his
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`testimony that claim 1 requires stress. Petitioner’s counsel asked leading questions
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`indicating to Shanfield that “Claims 2, 3, and 20 recite stress limitations” and that
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`claim 1 does not. Ex. 2026 at 144:1-12. As the citations provided herein illustrate,
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`Patent Owner timely objected to all of these questions as leading.
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`Despite his sworn testimony that he was unable to answer the same question
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`about claim 2 when asked by Patent Owner’s counsel at his prior deposition,
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`Shanfield was suddenly able to answer. The reason is clear—Petitioner’s
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`counsel’s leading questions indicated to Shanfield what answer he should give,
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`and Shanfield dutifully followed counsel’s lead and concluded that claim 2
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`requires stress. Compare Ex. 2010 at 230:15-231:7 with Ex. 2026 at 144:1-12.
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`
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`9
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`
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`Petitioner’s counsel continued to provide context clues to indicate to
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`Shanfield the responses counsel wanted. After leading Shanfield to opine that
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`claim 1 does not require stress (Ex. 2026 at 144:1-12), Petitioner’s counsel then
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`read Shanfield’s earlier cross-examination testimony and suggested that he re-
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`characterize that testimony, which was undeniably about claim 1, and assert that it
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`was instead about embodiments in the specification. Ex. 2026 at 144:14-145:6.
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`The leading question “[Was your earlier testimony] referring to what’s required by
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`the claims, or were you referring to the description of the stress film embodiment
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`in the specification?” unquestionably indicated that Petitioner’s counsel wanted
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`Shanfield to choose the latter alternative, which Shanfield dutifully did.
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`Petitioner’s counsel then used further leading questions to indicate to Shanfield
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`that he should contradict his earlier testimony under cross-examination and say that
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`an etch stop layer that does not impart stress “[c]ould [be] the silicon nitride film in
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`Claim 1,” and Shanfield followed along. Ex. 2026 at 144:12-145:14.
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`These leading questions contained context clues indicating the desired
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`responses. These are the type of questions the Board has found require exclusion
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`under Fed. R. Evid. 611(c). E.g., Universal Remote Control, IPR2014-01146
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`Paper No. 36 at 6-7 (excluding re-direct examination, finding the questions were
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`leading because they “contained contextual cues sufficient to suggest the answer
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`that counsel desired to elicit.”).
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`10
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`
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`The facts here are more egregious than in Universal Remote. As mentioned
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`above, the crutch of Petitioner’s counsel’s leading questions were critical for
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`Shanfield. Indeed, they enabled Shanfield to answer questions about claim 2 that
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`he was unable to answer without being led. Compare Ex. 2010 at 230:15-231:7
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`with Ex. 2026 at 144:1-12.
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`Additionally, even after Shanfield had been led by Petitioner’s counsel to
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`give the answer counsel wanted (“no”) to the question of whether claim 1 required
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`stress, moments later Shanfield provided the exact opposite answer (“yes”—
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`reverting to the position he had taken earlier in the deposition) to the same
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`question when posed by Patent Owner’s counsel in a manner that did not tell
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`Shanfield what answer he was supposed to give to further Petitioner’s case. Ex.
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`2026 at 160:8-23 (answering “Yes” when asked “So it is your understanding that
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`Claim 1 of the ’501 patent requires that the silicon nitride film induce stress?”).
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`Thus, the record establishes that Shanfield signed a declaration agreeing
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`wholesale with Petitioner’s arguments even though he “didn’t know” the legal
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`principles necessary to interpret the claims (Ex. 2026 at 167:14-21) and “needed
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`to be instructed on” those legal principles (id. at 173:1-3) during the deposition,
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`and he gave Petitioner’s counsel the answers counsel wanted when led to do so on
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`redirect (i.e., claim 1 does not require stress), even though this was not Shanfield’s
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`own testimony because he contradicted it earlier and then again moments later.
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`11
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`
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`For the reasons stated above, Shanfield’s testimony given over timely
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`objection on redirect (Ex. 2026 at 144:1-12, 145:1-147:8) in response to improper
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`leading questions from Petitioner’s counsel should be excluded.
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`C.
`
`Shanfield’s Testimony Elicited In Response to Petitioner’s
`Counsel’s Leading, Directing and Coaching During Re-Redirect
`Also Should Be Excluded
`After Shanfield returned to his un-coached opinion that claim 1 requires
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`stress on re-cross-examination (Ex. 2026 at 160:8-23), Petitioner’s counsel
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`abandoned all pretense that it was Shanfield—not counsel—that was testifying.
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`Petitioner’s counsel directly coached and instructed Shanfield on how he should
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`answer without even bothering to frame his coaching in the form of a question.
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`Ex. 2026 at 167:14-170:9 (coaching Shanfield by stating “I’m going to represent
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`to you that as a legal matter, a dependent claim recites additional limitations that
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`are not present in the independent claim from which it depends.”).3
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`3 After this improper coaching took place and before Shanfield answered any
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`further questions, Patent Owner stopped the deposition and called the Board for
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`guidance because Petitioner’s counsel was “very clearly teaching legal principles
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`and coaching on the record” and would not agree to refrain from questions
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`following up on the coaching just provided. Ex. 2026 at 168:5-170:9. The parties
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`were unable to reach the Board. Given the late hour (after 7 PM), Patent Owner
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`12
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`
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`As the deposition transcript reveals, Petitioner’s counsel then incorporated
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`this coaching into a series of leading questions, resulting in Shanfield—for the
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`third time in the deposition—changing his testimony about whether claim 1
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`requires stress. Ex. 2026 at 170:11-173:3. Shanfield dutifully gave counsel the
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`testimony counsel wanted—and that Shanfield was only able to give when he was
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`explicitly led—that claim 1 does not require stress.
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`The instruction from counsel and the leading questions that followed and
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`leveraged that instruction during re-redirect clearly constitute coaching.
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`Tellingly, Shanfield admitted that at the time he signed his declarations and
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`formed what were allegedly his opinions (i.e., prior to his July 25th deposition),
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`Shanfield “didn’t know” that dependent claims recite additional limitations not
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`present in the independent claim. Ex. 2026 at 167:14-21 (admitting he “didn’t
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`know” this legal principle), 173:1-3 (admitting he “needed to be instructed on”
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`legal principles). In other words, any opinions Shanfield formed were formed
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`without understanding that principle. Thus, Petitioner’s counsel was not
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`reminding Shanfield of any basis of Shanfield’s opinions expressed in his
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`agreed to allow the deposition to continue once Petitioner’s counsel agreed that
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`Patent Owner was not waiving any objections or other remedies by allowing the
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`deposition to proceed. Id.
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`
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`13
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`
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`declaration testimony. Rather, Petitioner’s counsel provided new instructions on
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`re-redirect to coach Shanfield to provide the testimony that counsel wanted (i.e.,
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`claim 1 does not require stress).
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`Petitioner’s counsel clearly violated the Trial Practice Guide’s strict
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`prohibition on coaching witnesses and the testimony that emerged from that
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`coaching should be excluded, i.e., Exhibit 2026 at 167:14-173:3, 173:10-178:4.
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`Moreover, the improper coaching and the leading questions that followed it left
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`Shanfield with no doubt as to Petitioner’s counsel’s desired response so the above-
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`listed testimony also should be excluded pursuant to Fed. R. Evid. 611(c). Even
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`leading questions in isolation justify exclusion. Universal Remote Control,
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`IPR2014-01146 Paper No. 36 at 6-7. Leading questions that follow an explicit
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`coaching instruction, and that expressly and repeatedly refer back to it, are even
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`more egregious and must be excluded. This is particularly true where Shanfield
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`had ample opportunity to provide his own un-coached testimony which directly
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`contradicts the improperly coached testimony that Petitioner’s counsel, after
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`multiple tries, finally led Shanfield to adopt.
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`It is highly prejudicial and unfair to Patent Owner to allow Petitioner to
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`provide new instructions to its witness at deposition for the clear purpose of
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`coaching the witness to alter his own (albeit incorrect) testimony. The Trial
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`Practice Guide, Fed. R. Evid. 611(c), and principles of fairness require that the
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`
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`14
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`
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`deposition record reflects Shanfield’s own (albeit incorrect) understanding of
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`claim 1, rather than counsel’s. Thus, the testimony elicited by Petitioner’s
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`improper instructing, coaching and leading (Exhibit 2026 at 144:1-12, 145:1-
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`147:8, 167:14-173:3, 173:10-178:4) should be excluded.
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`D.
`
`Patent Owner Did Not Waive Its Objections to the Improper
`Leading Questions, Instructions, and Coaching
`
`Patent Owner properly and timely objected to each question or instruction at
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`the time of the deposition as can be seen in the portions of the deposition transcript
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`Patent Owner seeks to exclude. Ex. 2026 at 144:1-12, 145:1-147:8, 167:14-173:3,
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`173:10-178:4. Because the Parties were unable to reach the Board during the
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`deposition, Petitioner agreed that Patent Owner did not waive any objections or
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`remedies by allowing the deposition to proceed after Shanfield was improperly
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`coached and instructed by counsel. Ex. 2026 at 168:5-170:9.
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`IV. CONCLUSION
`For the foregoing reasons, Patent Owner requests that Ex. 1026, in its
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`entirety, paragraphs 18 and 29 of Ex. 1027, and Ex. 2026 at 144:1-12, 145:1-147:8,
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`167:14-173:3, 173:10-178:4 be excluded from evidence and expunged from the
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`record.
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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 /
`Joshua J. Miller (admitted pro hac vice)
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`15
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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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`16
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