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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 REPLY IN SUPPORT OF ITS MOTION TO
`EXCLUDE EVIDENCE
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`
`
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`
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`1 Case IPR2017-01842 has been consolidated with this proceeding. See Paper 10
`at 3．
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`
`
`TABLE OF CONTENTS
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`OFFERED AS PRIOR ART, RASHED MUST BE EXCLUDED ................ 1
`SHANFIELD’S IMPROPERLY COACHED DEPOSITION
`TESTIMONY SHOULD BE EXCLUDED .................................................... 2
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`
`
`I.
`II.
`
`
`
`
`i
`
`
`
`CASES
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`TABLE OF AUTHORITIES
`
`
`Apple Inc. v. Achates Reference Publishing, Inc.
`IPR2013-00080, Paper No. 90 at 52 (PTAB June 2, 2014) ................................... 2
`
`Thomas & Betts Corp. v. Litton Sys., Inc.,
`720 F.2d 1572 (Fed. Cir. 1983) .............................................................................. 2
`
`Universal Remote Control v. Universal Elecs.,
`IPR2014-01146 Paper No. 36 at 6-7 ..................................................................3, 5
`
`RULES
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`Fed. R. Evid. 402 ....................................................................................................... 5
`
`Fed. R. Evid. 611(c) ...............................................................................................3, 5
`
`
`
`
`ii
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`
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`I.
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`OFFERED AS PRIOR ART, RASHED MUST BE EXCLUDED
`In response to Patent Owner (“PO”)’s motion, Petitioner purports to rewrite
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`its Reply (Paper No. 22) and now argues that “Shanfield does not testify that
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`Rashed (Ex. 1026) is itself prior art.” Opp. at 4. But the Reply and Shanfield
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`unambiguously misidentified Rashed as one of the “examples in the prior art.”
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`Petitioner offered Rashed as an “example in the prior art” but it fails to qualify as
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`prior art by more than 9 years. Rashed and Ex. 1027 ¶¶ 18, 29 must be excluded.2
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`PO did not “mischaracterize[]” the Reply and Shanfield’s declaration. Opp.
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`at 4. As can be seen below, Petitioner and Shanfield referenced “examples
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`[(plural)] in the prior art” before introducing the first example, Agata, and the
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`purported second example, Rashed. Further, Petitioner and Shanfield asserted,
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`without any evidence, that Rashed’s reference to an undated, unidentified device
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`that was “prior art” to Rashed in 2012 describes a device that was prior art in 2003.
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`Tellingly, Petitioner’s Opposition does not address these statements.
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`Reply at 11-13
`[A]dditional examples in the prior art
`*
`*
`*
`For example, U.S. Patent No. 5,389,810
`
`Ex. 1027 at ¶¶ 17-18
`Other examples in the prior art
`*
`*
`*
`For example, U.S. Patent No. 5,389,810
`
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`2 PO objected to all the evidence it seeks to exclude and the objections to Rashed
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`necessarily extend to citations to Rashed. Paper No. 23.
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`
`
`1
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`
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`to Agata (“Agata”) describes …
`*
`*
`*
`For example, when observing a plan
`view … U.S. Patent No. 8,618,607 to
`Rashed et al. (“Rashed”) illustrates.
`*
`*
`*
`Rashed even acknowledges [w]hat the
`prior art teaches.
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`Petitioner’s cited cases (Apple and Thomas & Betts Corp.) merely confirm
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`to Agata (“Agata”) describes…
`*
`*
`*
`For example, when observing a plan
`view … U.S. Patent No. 8,618,607 to
`Rashed et al. (“Rashed”) illustrates.
`*
`*
`*
`Rashed even acknowledges [w]hat the
`prior art teaches.
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`that non-prior art documents can be admissible when not offered as prior art. That
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`proposition is inapposite because Petitioner offers Rashed as prior art.
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`PO’s expert testified (Opp. at 5) that active region “as used in the ’501
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`patent,” i.e., the MISFET includes it, “has one transistor.” Ex. 1029 at 31:11-19.
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`II.
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`SHANFIELD’S IMPROPERLY COACHED DEPOSITION
`TESTIMONY SHOULD BE EXCLUDED
`
`Petitioner’s assertion that Shanfield “offered consistent technical testimony
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`throughout the deposition” and “consistently testified” that “the claim language
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`doesn’t require stress” (see Opp. 7-11) is belied by Shanfield’s repeated testimony
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`that while the language does not literally require it, the “silicon nitride being
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`discussed in this claim is a stress-inducing film.” Ex. 2026 at 52:3-19; see also
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`56:13-16, 56:17-58:2; 160:20-23. Shanfield’s testimony at 51:22-53:6 provides a
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`clear example of this. Shanfield provided opinions on the claim language in a
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`2
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`
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`vacuum stating that “the language doesn’t require stress” and that stress isn’t
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`required to meet the limitations (51:22-52:2, 52:21-53:6); however, when asked
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`regarding “his understand[ing]” (as opposed to the language) of the claims he
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`testified that in view of the specification claim 1 requires stress (52:3-19).
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`Similarly, Petitioner’s erroneous assertion that testimony at 56:17-58:2 was limited
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`to an embodiment of the specification ignores that 52:3-19 provides the same
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`testimony prior to the alleged discussion of the embodiment at 56:4-16, and it
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`ignores that the suggestion that it was limited to an embodiment was introduced
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`through Petitioner’s improper leading questions. Opp. at 10-11.
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`Petitioner strains its credibility again by asserting that the redirect was
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`“routine,” that counsel’s questions were “open-ended” and that counsel avoided
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`“even a hint of coaching.” Opp. at 11-12. Petitioner’s legal instruction and
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`leading questions which expressly incorporated that instruction constitute
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`coaching. Petitioner does not try to distinguish Universal Remote, address FRE
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`611(c), or cite any support for its extraordinary assertion that counsel was
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`authorized to “clarif[y] the law for Dr. Shanfield” during questioning. Opp. at 13-
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`14. Petitioner’s assertion that the “legal representations” were not leading fails on
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`its face. In addition, as the examples below illustrate, counsel’s questions “were
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`phrased narrowly so as to elicit either a ‘yes’ or ‘no’ answer.” Universal Remote
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`Control v. Universal Elecs., IPR2014-01146 Paper No. 36 at 6-7.
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`
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`3
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`
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`Q. Do Claims 2, 3, and 20 recite stress limitations?
`144:1-2
`144:9-10 Q. Does Claim 1 require that a silicon nitride film be a stress film?
`167:14-
` Q. I’m going to represent to you that as a legal matter, a dependent
`168:2
`claim recites additional limitations that are not present in the
`independent claim from which it depends.
` * * *
`Q. With that understanding in mind, does … Claim 2 require -- or
`recite a stress limitation?
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`
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`During recross, Shanfield had a copy of the ’501 patent (compare 159:19-20
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`(“Oh, there it is.”) with Opp. at 13) when, without Petitioner’s counsel’s improper
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`guidance regarding the dependent claims, he returned to his opinion that claim 1
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`requires stress. Ex. 2026 at 160:20-23. Petitioner’s assertion that Shanfield’s Ex.
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`1002 declaration analyzed claim 2 (Opp. 9-10) reinforces that Shanfield rubber-
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`stamped Petitioner’s arguments because, at deposition, Shanfield couldn’t identify
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`whether claim 2 recited stress (Ex. 2010 at 230:15-231:7) and claimed not to have
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`analyzed claim 2 (Ex. 2010 230:23-24), but then readily followed Petitioner’s
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`counsel’s lead and answered questions about claim 2 (Ex. 2026 at 144:1-12).
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`There are not simply “similarities” (Opp. 10 n.2) between Shanfield’s
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`declarations and Petitioner’s papers—the record demonstrates that Shanfield
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`copied nearly verbatim Petitioner’s attorney arguments. E.g., compare Ex. 1027,
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`¶ 29 with the paragraph spanning Reply at 19-20 (incorrectly copying even the
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`cross-reference to “Section II” when it should be “Section I” in Ex. 1027). Thus,
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`
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`4
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`
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`Petitioner’s assertion that Shanfield offered only “technical testimony” (Opp. 7) is
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`facially false. His declarations parrot verbatim Petitioner’s legal arguments and his
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`Ex. 1002 declaration contained a three page legal section (Ex. 1002, Section II)
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`explaining the law he purportedly applied in his analysis. Yet, Shanfield admitted
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`that prior to receiving the improper, re-redirect instruction he did not know some
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`of these basic legal principles, had never been instructed on them, and needed the
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`instruction to understand the claims. Ex. 2026 at 167:14-21, 173:1-3. In other
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`words, Shanfield admitted that Petitioner’s counsel provided new instructions
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`which had not informed the opinions in Shanfield’s declaration. To the extent
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`Shanfield was “mixed up” (Opp. at 13) it is because he copied Petitioner’s attorney
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`arguments verbatim in his Petition and then dutifully answered counsel’s leading
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`questions even though by his own testimony he admits he didn’t understand the
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`legal principles needed to offer that testimony in the first place. Petitioner’s
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`counsel cannot use new instructions to clean up his testimony.
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`Finally, FRE 402 is clear that PO’s observations on the relevance of
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`Shanfield’s testimony (Opp. at 8-9) does not change that the testimony is
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`inadmissible under Fed. R. Evid. 611(c). FRE 402; see also Universal Remote.
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`Dated: August 29, 2018
`
`
`Respectfully submitted,
`Godo Kaisha IP Bridge 1
`
`
`
`
`
`
`By /Joshua J. Miller /
`Joshua J. Miller (admitted pro hac vice)
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`5
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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 29, 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 29, 2018
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`/MacAulay Rush/
`MacAulay Rush
`Patent Paralegal
`WOLF GREENFIELD & SACKS, P.C.
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`6
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