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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING CO., LTD,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2017-018431
`Patent 7,893,501
`____________
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`PURSUANT TO 37 C.F.R. §42.64(C)
`
`
`
`1 Case IPR2017-01844 has been consolidated with this proceeding. See Paper 10
`at 3.
`
`
`
`I.
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`SHANFIELD’S IMPROPERLY COACHED DEPOSITION
`TESTIMONY SHOULD BE EXCLUDED .................................................... 1
`A.
`Shanfield’s Uncoached Testimony Regarding Claim 1 and Etch
`Stop Layers Contradicts the Petition ..................................................... 4
`The Testimony Resulting from Petitioner’s Counsel’s Leading
`Questions on Re-Direct Should be Excluded ........................................ 5
`Shanfield’s Testimony Elicited In Response to Petitioner’s
`Counsel’s Leading, Directing and Coaching During Re-
`Redirect Also Should Be Excluded ....................................................... 8
`Patent Owner Did Not Waive Its Objections to the Improper
`Leading Questions, Instructions, and Coaching ..................................12
`III. CONCLUSION ..............................................................................................13
`
`
`
`B.
`
`C.
`
`D.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`Universal Remote Control v. Universal Elecs.,
`IPR2014-01146 Paper No. 36 (PTAB Dec. 10, 2015) ............................ 1, 3, 7, 12
`
`RULES
`
`Fed. R. Evid. 611(c) ......................................................................................... passim
`
`REGULATIONS
`Trial Practice Guide,
`77 Fed. Reg. 48756 (Aug. 14, 2012) ...................................................................... 3
`
`
`
`
`
`
`
`ii
`
`
`
`I.
`
`INTRODUCTION
`
`Godo Kaisha IP Bridge 1 (“Patent Owner”) moves to exclude portions of the
`
`deposition transcript of Petitioner’s expert (“Shanfield”) because, during redirect
`
`(and re-redirect), Petitioner’s counsel blatantly led and coached Shanfield to
`
`change the testimony he offered under cross-examination. Ex. 2232 at 144:1-12,
`
`145:1-147:8, 167:14-173:3, 173:10-178:4. The testimony Petitioner elicited
`
`through improper leading and coaching should be excluded pursuant to Fed. R.
`
`Evid. 611(c). E.g., Universal Remote Control v. Universal Elecs., IPR2014-01146
`
`Paper No. 36 at 6-7 (PTAB Dec. 10, 2015) (excluding re-direct examination,
`
`finding the questions were leading because they “contained contextual cues
`
`sufficient to suggest the answer that counsel desired to elicit.”).
`
`Shanfield’s willingness to completely alter his testimony in response to
`
`improper coaching should be considered in judging the credibility of all his
`
`testimony in this proceeding, but more is required. In addition to the Trial Practice
`
`Guide’s strict prohibition on coaching witnesses, Fed. R. Evid. 611(c) requires
`
`exclusion of the deposition testimony because it was influenced by the improper
`
`leading questions, coaching and instructions.
`
`
`
`II.
`
`SHANFIELD’S IMPROPERLY COACHED DEPOSITION
`TESTIMONY SHOULD BE EXCLUDED
`
`Shanfield’s declarations (Exs. 1202 and 1232) are near verbatim copies of
`
`Petitioner’s arguments in the Petition and Reply, respectively. But Shanfield’s
`
`
`
`1
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`
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`own opinions offered during cross-examination contradict Petitioner’s arguments.
`
`Faced with this, Petitioner’s counsel improperly coached, instructed and led
`
`Shanfield on redirect (and re-redirect) to elicit testimony consistent with the
`
`arguments in the Petition. The improperly elicited testimony should be excluded.
`
`At deposition, Shanfield opined that claim 1 “requires that the [claimed]
`
`silicon nitride film induce stress” in the substrate. Exhibit 2232 at 160:20-23; see
`
`also id. at 56:17-58:2. He further testified that an etch stop layer cannot induce
`
`stress. Exhibit 2232 at 45:3-18. Taken together, these two opinions contradict the
`
`arguments in the Petition at 29-30 (copied in Shanfield’s declaration at Ex. 1202 at
`
`¶¶89-90) that Misra’s plasma-enhanced nitride layer 20, which is an etch stop
`
`layer, meets the claimed silicon nitride layer.
`
`On redirect and re-redirect, Petitioner’s counsel led, coached, and even
`
`instructed Shanfield, leading him to directly contradict his earlier testimony that
`
`claim 1 requires that the silicon nitride film impart stress and that an etch stop layer
`
`cannot satisfy the silicon nitride film limitation.
`
`Shanfield’s deposition revealed that he signed declarations, largely parroting
`
`Petitioner’s arguments, and offered opinions about claim interpretation, even
`
`though he “didn’t know” the legal principles necessary to properly interpret the
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`claims. Ex. 2232 at 167:14-21. Indeed, Shanfield “needed to be instructed on”
`
`
`
`2
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`
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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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`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.,
`
`Universal Remote Control, IPR2014-01146 Paper No. 36 at 6-7 (excluding re-
`
`direct examination, finding the questions were leading because they “contained
`
`contextual cues sufficient to suggest the answer that counsel desired to elicit.”); see
`
`also Trial Practice Guide, 77 Fed. Reg. 48756 at 48772 (Appendix D: Testimony
`
`Guidelines) (“coaching of witnesses in proceedings before the Board [is] strictly
`
`prohibited.”).
`
`Petitioner had Shanfield sign declarations that largely repeat Petitioner’s
`
`arguments without ensuring that he knew the legal principles that were necessary
`
`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
`
`
`
`3
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`
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`Petitioner’s arguments. The improperly elicited testimony (Exhibit 2232 at 144:1-
`
`12, 145:1-147:8, 167:14-173:3, 173:10-178:4) should be excluded.
`
`A.
`
`Shanfield’s Uncoached Testimony Regarding Claim 1 and Etch
`Stop Layers Contradicts the Petition
`
`During cross-examination, Shanfield testified that in his opinion, the silicon
`
`nitride film in claim 1 must induce stress because “a person of skill in the art
`
`would interpret [the claimed] silicon nitride film as delivering nonnegligible stress
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`to the substrate.” Exhibit 2232 at 56:17-58:2. Shanfield explicitly confirmed that
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`“Yes” it was his “understanding that Claim 1 of the ’501 patent requires that the
`
`silicon nitride film induce stress.” Exhibit 2232 at 160:20-23.
`
`Shanfield also testified that a silicon nitride film as “an etch stop layer”
`
`would deliver only “[n]egligible stress in the context of the ’501.” Exhibit 2232 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 2232 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.
`
`Shanfield’s opening declaration asserted that Misra’s plasma-enhanced nitride
`
`layer 20 is an “etch stop layer” and satisfies the silicon nitride film limitation of
`
`claim 1. Ex. 1202 ¶¶89-90; see also Petition at 29-30. But at deposition, Shanfield
`
`testified that the claimed silicon nitride film must induce stress, and that an etch
`
`
`
`4
`
`
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`stop layer does not induce stress. Compare Ex. 1202 ¶¶89-90 with Exhibit 2232 at
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`45:3-18, 56:17-58:2, 160:20-23.
`
`To be clear, Patent Owner does not agree with Shanfield’s testimony under
`
`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
`
`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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`B.
`
`The Testimony Resulting from Petitioner’s Counsel’s Leading
`Questions on Re-Direct Should be Excluded
`
`When Shanfield opined that claim 1 requires that the silicon nitride film
`
`impart stress, dependent claims had not been discussed in the deposition. Ex. 2232
`
`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. 2210 at 230:15-231:7.
`
`On re-direct, Petitioner’s counsel introduced dependent claims 2-3 and 20 in
`
`re-direct through leading questions that clearly indicated to Shanfield that he
`
`should recant his testimony that claim 1 requires stress. Specifically, Petitioner’s
`
`counsel asked leading questions indicating to Shanfield that “Claims 2, 3, and 20
`
`
`
`5
`
`
`
`recite stress limitations” and that claim 1 does not. Ex. 2232 at 144:1-12. As the
`
`citations provided herein illustrate, Patent Owner timely objected to all of these
`
`questions as leading.
`
`Despite his sworn testimony that he was unable to answer the same question
`
`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
`
`counsel’s leading questions indicated to Shanfield what answer he should give,
`
`and Shanfield dutifully followed counsel’s lead and concluded that claim 2
`
`requires stress. Compare Ex. 2210 at 230:15-231:7 with Ex. 2232 at 144:1-12.
`
`Petitioner’s counsel continued to provide context clues to indicate to
`
`Shanfield the responses counsel wanted. After leading Shanfield to opine that
`
`claim 1 does not require stress (Ex. 2232 at 144:1-12), Petitioner’s counsel then
`
`read Shanfield’s earlier cross-examination testimony and suggested that he re-
`
`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. 2232 at 144:14-145:6.
`
`The leading question “[Was your earlier testimony] referring to what’s required by
`
`the claims, or were you referring to the description of the stress film embodiment
`
`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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`
`
`6
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`
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`that he should contradict his earlier testimony under cross-examination and say that
`
`an etch stop layer that does not impart stress “[c]ould [be] the silicon nitride film in
`
`Claim 1,” and Shanfield followed along. Ex. 2232 at 144:12-145:14.
`
`These leading questions speak for themselves and clearly contained context
`
`clues indicating the desired responses. These are the type of questions the Board
`
`has found require exclusion under Fed. R. Evid. 611(c). E.g., Universal Remote
`
`Control, IPR2014-01146 Paper No. 36 at 6-7 (excluding re-direct examination,
`
`finding the questions were leading because they “contained contextual cues
`
`sufficient to suggest the answer that counsel desired to elicit.”).
`
`The facts here are more egregious than in Universal Remote. As mentioned
`
`above, the crutch of Petitioner’s counsel’s leading questions were critical for
`
`Shanfield. Indeed, they enabled Shanfield to answer questions about claim 2 that
`
`he was unable to answer without being led. Compare Ex. 2210 at 230:15-231:7
`
`with Ex. 2232 at 144:1-12.
`
`Additionally, even after Shanfield had been led by Petitioner’s counsel to
`
`give the answer counsel wanted (“no”) to the question of whether claim 1 required
`
`stress, moments later Shanfield provided the exact opposite answer (“yes”—
`
`reverting to the position he had taken earlier in the deposition) to the same
`
`question when posed by Patent Owner’s counsel in a manner that did not tell
`
`Shanfield what answer he was supposed to give to further Petitioner’s case. Ex.
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`
`
`7
`
`
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`2232 at 160:8-23 (answering “Yes” when asked “So it is your understanding that
`
`Claim 1 of the ’501 patent requires that the silicon nitride film induce stress?”).
`
`Thus, the record establishes that Shanfield signed a declaration agreeing
`
`wholesale with Petitioner’s arguments even though he “didn’t know” the legal
`
`principles necessary to interpret the claims (Ex. 2232 at 167:14-21) and “needed
`
`to be instructed on” those legal principles (id. at 173:1-3) during the deposition,
`
`and he gave Petitioner’s counsel the answers counsel wanted when led to do so on
`
`redirect (i.e., claim 1 does not require stress), even though this was not Shanfield’s
`
`own testimony because he contradicted it earlier and then again moments later.
`
`For the reasons stated above, Shanfield’s testimony given over timely
`
`objection on redirect (Ex. 2232 at 144:1-12, 145:1-147:8) in response to improper
`
`leading questions from Petitioner’s counsel should be excluded.
`
`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
`
`stress on re-cross-examination (Ex. 2232 at 160:8-23), Petitioner’s counsel
`
`abandoned all pretense that it was Shanfield—not counsel—that was testifying.
`
`Petitioner’s counsel directly coached and instructed Shanfield on how he should
`
`answer without even bothering to frame his coaching in the form of a question.
`
`Ex. 2232 at 167:14-170:9 (coaching Shanfield by stating “I’m going to represent
`
`
`
`8
`
`
`
`to you that as a legal matter, a dependent claim recites additional limitations that
`
`are not present in the independent claim from which it depends.”).2
`
`As the following excerpt reveals, Petitioner’s counsel then incorporated this
`
`coaching into a series of leading questions, resulting in Shanfield—for the third
`
`time in the deposition—changing his testimony about whether claim 1 requires
`
`stress. Shanfield dutifully gave counsel the testimony counsel wanted—and that
`
`Shanfield was only able to give when he was explicitly led— that claim 1 does not
`
`require stress.
`
`11 Q. So, Dr. Shanfield, with the representation
`12 I just made to you in mind about how independent and
`13 dependent claims are interpreted, could you look at
`
`2 After this improper coaching took place and before Shanfield answered any
`
`further questions, Patent Owner stopped the deposition and called the Board for
`
`guidance because Petitioner’s counsel was “very clearly teaching legal principles
`
`and coaching on the record” and would not agree to refrain from questions
`
`following up on the coaching just provided. Ex. 2232 at 168:5-170:9. The parties
`
`were unable to reach the Board. Given the late hour (after 7 PM), Patent Owner
`
`agreed to allow the deposition to continue once Petitioner’s counsel agreed that
`
`Patent Owner was not waiving any objections or other remedies by allowing the
`
`deposition to proceed. Id.
`
`
`
`9
`
`
`
`14 dependent Claim 2.
`15 A. Yes.
`16 MR. HRYCYSZYN: Objection, beyond the
`17 scope. Same objections as before as to the improper
`18 question.
`*
`*
`*
`3 Q. Do you see that Claim 2 depends from
` 4 Claim 1?
` 5 MR. HRYCYSZYN: Objection, beyond the
` 6 scope.
` 7 THE WITNESS: Yes, I do.
`*
`*
`*
`15 BY MR. SMITH:
`16 Q. And with the understanding that we
`17 discussed earlier, is there anything you would like
`18 to clarify with your testimony regarding whether
`19 Claim 1 requires silicon nitride film to induce
`20 stress?
`21 MR. HRYCYSZYN: So –
`*
`*
`*
` 5 So objection, coaching the witness.
` 6 Objection, leading. Objection, coaching and
` 7 instructing the witness.
` 8 THE WITNESS: Yes. I do want to
` 9 clarify. Now that I understand the legal issue,
`Ex. 2232 at 170:11-173:3.
`
`
`
`10
`
`
`
`The instruction from counsel and the leading questions that followed and
`
`leveraged that instruction during re-redirect clearly constitute coaching.
`
`Tellingly, Shanfield admitted that at the time he signed his declarations and
`
`formed what were allegedly his opinions (i.e., prior to his July 25th deposition),
`
`Shanfield “didn’t know” that dependent claims recite additional limitations not
`
`present in the independent claim. Ex. 2232 at 167:14-21 (admitting he “didn’t
`
`know” this legal principle), 173:1-3 (admitting he “needed to be instructed on”
`
`legal principles). In other words, any opinions Shanfield formed were formed
`
`without understanding that principle. Thus, Petitioner’s counsel was not
`
`reminding Shanfield of any basis of Shanfield’s opinions expressed in his
`
`declaration testimony. Rather, Petitioner’s counsel provided new instructions on
`
`re-redirect to coach Shanfield to provide the testimony that counsel wanted (i.e.,
`
`claim 1 does not require stress).
`
`Petitioner’s counsel clearly violated the Trial Practice Guide’s strict
`
`prohibition on coaching witnesses and the testimony that emerged from that
`
`coaching should be excluded, i.e., Exhibit 2232 at 167:14-173:3, 173:10-178:4.
`
`Moreover, the improper coaching and the leading questions that followed it left
`
`Shanfield with no doubt as to Petitioner’s counsel’s desired response so the above-
`
`listed testimony also should be excluded pursuant to Fed. R. Evid. 611(c). Even
`
`leading questions in isolation justify exclusion. Universal Remote Control,
`
`
`
`11
`
`
`
`IPR2014-01146 Paper No. 36 at 6-7 (excluding re-direct examination, finding the
`
`questions were leading because they “contained contextual cues sufficient to
`
`suggest the answer that counsel desired to elicit.”). Leading questions that follow
`
`an explicit coaching instruction, and that expressly and repeatedly refer back to it,
`
`are even more egregious and must be excluded. This is particularly true where
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`Shanfield had ample opportunity to provide his own un-coached testimony which
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`directly contradicts the improperly coached testimony that Petitioner’s counsel,
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`after multiple tries, finally led Shanfield to adopt.
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`It is highly prejudicial and unfair to Patent Owner to allow Petitioner to
`
`provide new instructions to its witness at deposition for the clear purpose of
`
`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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`deposition record reflects Shanfield’s own (albeit incorrect) understanding of
`
`claim 1, rather than counsel’s. Thus, the testimony elicited by Petitioner’s
`
`improper instructing, coaching and leading (Exhibit 2232 at 144:1-12, 145:1-
`
`147:8, 167:14-173:3, 173:10-178:4) should be excluded.
`
`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
`
`the time of the deposition as can be seen in the portions of the deposition transcript
`
`Patent Owner seeks to exclude. Ex. 2232 at 144:1-12, 145:1-147:8, 167:14-173:3,
`
`
`
`12
`
`
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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
`
`remedies by allowing the deposition to proceed after Shanfield was improperly
`
`coached and instructed by counsel. Ex. 2232 at 168:5-170:9.
`
`III. CONCLUSION
`For the foregoing reasons, Patent Owner requests that Ex. 2232 at 144:1-12,
`
`145:1-147:8, 167:14-173:3, 173:10-178:4 be excluded from evidence and
`
`expunged from the record.
`
`Dated: August 9, 2018
`
`
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`
`
`
`
`
`
`Respectfully submitted,
`Godo Kaisha IP Bridge 1
`
`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
`
`
`
`
`13
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`
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. §42.6 (e)(4)
`
`I certify that on August 9, 2018 I will cause a copy of the foregoing
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`
`
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`document, including any exhibits referred to therein, to be served via electronic
`
`mail, as previously consented to by Petitioner, upon the following:
`
`
`
`David L. Cavanaugh
`
`David.Cavanaugh@wilmerhale.com
`
`Dominic.Massa@wilmerhale.com
`
`MichaelH.Smith@wilmerhale.com
`
`
`
`
`
`Dominic E. Massa
`
`Michael H. Smith
`
`
`
`
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`
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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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`14
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`
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