Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper No. 26
`Entered: July 20, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2017-018411
`Case IPR2017-018432
`Patent 7,893,501 B2
`____________
`
`
`
`Before JENNIFER MEYER CHAGNON and MELISSA A. HAAPALA,
`Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 Case IPR2017-01842 has been consolidated with Case IPR2017-01841.
`2 Case IPR2017-01844 has been consolidated with Case IPR2017-01843.
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper No. 26
`Entered: July 20, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2017-018411
`Case IPR2017-018432
`Patent 7,893,501 B2
`____________
`
`
`
`Before JENNIFER MEYER CHAGNON and MELISSA A. HAAPALA,
`Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 Case IPR2017-01842 has been consolidated with Case IPR2017-01841.
`2 Case IPR2017-01844 has been consolidated with Case IPR2017-01843.
`
`
`
`IPR2017-01841, IPR2017-01843
`Patent 7,893,501 B2
`
`
`On July 19, 2018, a conference call was held involving counsel for the
`respective parties and Judges Chagnon and Haapala. A court reporter was
`present for the conference call; Patent Owner filed a copy of the transcript
`(IPR2017-01841, Ex. 2022; IPR2017-01843, Ex. 2230). The parties’
`positions are fully set forth in the court reporter’s transcript; we provide a
`summary herein.
`
`Request for Authorization to File a Listing of Allegedly Improper New
`Reply Arguments
`In each of IPR2017-01841 and IPR2017-01843, Patent Owner
`requests authorization to file a short paper identifying allegedly new
`arguments in Petitioner’s Reply. According to Patent Owner, each of
`Petitioner’s Replies presents new arguments. Petitioner asserts that the
`Replies are properly responsive to the Patent Owner Response filed in each
`proceeding, and opposes Patent Owner’s request.
`Having considered the parties’ positions, we authorize Patent Owner
`to file, in each proceeding, a paper identifying any allegedly new arguments
`by page and line number(s). Patent Owner may include a brief statement of
`the basis for its contention (e.g., “change in theory,” “not responsive”).
`Patent Owner’s paper shall not exceed two (2) pages, and shall be filed no
`later than July 24, 2018. Petitioner is authorized to file, in each proceeding,
`a responsive paper, indicating where the identified argument was previously
`raised and/or portions of the Patent Owner Response to which the identified
`argument responds, and a brief explanation as necessary. Petitioner’s paper
`shall not exceed two (2) pages, and shall be filed no later than July 27, 2018.
`Patent Owner shall provide a numbered list of the allegedly new arguments,
`and Petitioner shall respond with a correspondingly numbered list.
`
`2
`
`
`
`IPR2017-01841, IPR2017-01843
`Patent 7,893,501 B2
`
`
`Request for Authorization to File a Sur-Reply
`In IPR2017-01841, Patent Owner requests authorization to file a
`limited sur-reply and supporting expert declaration. Patent Owner indicates
`that a sur-reply is necessary to address Exhibits 1025 and 1026, as well as
`relevant declaration testimony from Petitioner’s declarant, Stanley R.
`Shanfield, Ph.D., submitted with Petitioner’s Reply in support of its
`assertions regarding claim construction. Patent Owner contends that its
`declarant has not had the opportunity to provide his opinion as to these
`exhibits, and that he disagrees with Dr. Shanfield’s characterizations thereof.
`Petitioner opposes Patent Owner’s request. Specifically, Petitioner
`argues that a sur-reply is not necessary, because the arguments presented in
`the Reply are not improper new arguments but are responsive to an
`“unforeseeable” claim construction position Patent Owner took in its
`Response; new exhibits often are submitted in support of a reply without the
`need for a sur-reply; and Patent Owner can use its opportunity to depose
`Dr. Shanfield and submit observations on cross-examination to address these
`issues.
`Having considered the parties’ positions, we determine that additional
`briefing on claim construction may be helpful to the panel in rendering a
`final written decision. Accordingly, we authorize Patent Owner to file a
`sur-reply, not to exceed three (3) pages, addressing Exhibits 1025 and 1026,
`as well as relevant testimony in Dr. Shanfield’s reply declaration (Ex. 1027),
`and the implications on claim construction in this proceeding. Patent Owner
`may submit with its sur-reply an expert declaration, also limited to three (3)
`pages. Patent Owner’s sur-reply shall be filed no later than July 27, 2018.
`
`3
`
`
`
`IPR2017-01841, IPR2017-01843
`Patent 7,893,501 B2
`
`Patent Owner shall make its declarant available for cross-examination no
`later than August 3, 2018.
`Petitioner is authorized to file a sur-sur-reply, not to exceed three (3)
`pages, responsive only to arguments made in Patent Owner’s sur-reply.
`Petitioner’s sur-sur-reply shall be filed no later than one week after the
`cross-examination of Patent Owner’s declarant (e.g., if the deposition occurs
`on August 3, Petitioner’s sur-sur-reply is due on August 10). Petitioner may
`file the transcript of the cross-examination of Patent Owner’s declarant, but
`is not authorized, at this time, to submit other new evidence or testimony
`with its sur-sur-reply. Petitioner may cite to record evidence in support of
`its arguments in the sur-sur-reply. If, after reviewing Patent Owner’s
`sur-reply, Petitioner believes additional evidence is necessary, Petitioner
`may contact the Board for further consideration of the question.
`
`Request for Authorization to File a Motion to Strike
`Also in IPR2017-01841, Patent Owner requests authorization to file a
`motion to strike certain testimony in Dr. Shanfield’s declaration (Ex. 1027)
`submitted with Petitioner’s Reply. Patent Owner contends that, during
`cross-examination regarding his original declaration (Ex. 1002),
`Dr. Shanfield took varying positions and/or refused to answer questions with
`respect to the meaning of the claim term “active region.” Patent Owner
`further contends that Dr. Shanfield then provided declaration testimony on
`these same points in the reply declaration. Petitioner opposes Patent
`Owner’s request, and asserts that Dr. Shanfield did not refuse to answer
`questions, and that Patent Owner’s line of questioning was confusing and/or
`technically flawed. In support of these assertions, counsel for both parties
`
`4
`
`
`
`IPR2017-01841, IPR2017-01843
`Patent 7,893,501 B2
`
`pointed to several portions of the Dr. Shanfield’s deposition transcript
`(Ex. 2010).
`Having considered the parties’ positions, Patent Owner is not
`authorized to file a motion to strike. Patent Owner has the opportunity to
`explore any alleged inconsistencies in Dr. Shanfield’s testimony during the
`cross-examination related to his reply declaration, which currently is
`scheduled for July 25, 2018 (see Paper 24). Patent Owner may bring any
`relevant testimony in this regard to the panel’s attention via observations on
`cross-examination, as set forth in the Scheduling Order (see Paper 11).
`
`It is
`ORDERED that Patent Owner is authorized to file, in each of
`IPR2017-01841 and IPR2017-01843, consistent with the requirements and
`deadline set forth above, a paper not to exceed two (2) pages identifying any
`allegedly new arguments in Petitioner’s Replies;
`FURTHER ORDERED that Petitioner is authorized to file, in each of
`IPR2017-01841 and IPR2017-01843, consistent with the requirements and
`deadline set forth above, a responsive paper not to exceed two (2) pages
`indicating where the identified argument was previously raised and/or
`portions of the Patent Owner Response to which the identified argument
`responds;
`FURTHER ORDERED that Patent Owner is authorized to file, in
`IPR2017-01841, consistent with the requirements and deadline set forth
`
`5
`
`
`
`IPR2017-01841, IPR2017-01843
`Patent 7,893,501 B2
`
`above, a sur-reply not to exceed three (3) pages, which may include a
`supporting declaration not to exceed three (3) pages;
`FURTHER ORDERED that Patent Owner shall make its declarant
`available for cross-examination, consistent with the deadline set forth above;
`FURTHER ORDERED that Petitioner is authorized to file, in
`IPR2017-01841, consistent with the requirements and deadline set forth
`above, a sur-sur-reply not to exceed three (3)pages; and
`FURTHER ORDERED that no motion to strike is authorized.
`
`
`
`
`
`
`6
`
`
`
`IPR2017-01841, IPR2017-01843
`Patent 7,893,501 B2
`
`PETITIONER:
`
`David L. Cavanaugh
`Dominic E. Massa
`Michael H. Smith
`WILMER CUTLER PICKERING HALE AND DORR LLP
`david.cavanaugh@wilmerhale.com
`dominic.massa@wilmerhale.com
`michaelh.smith@wilmerhale.com
`
`
`PATENT OWNER:
`
`Gerald B. Hrycyszyn
`Richard F. Giunta
`Edmund J. Walsh
`Joshua J. Miller
`WOLF, GREENFIELD & SACKS, P.C.
`ghrycyszyn-ptab@wolfgreenfield.com
`rgiunta-ptab@wolfgreenfield.com
`ewalsh-ptab@wolfgreenfield.com
`joshua.miller@wolfgreenfield.com
`
`
`7
`
`
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