DOCKET NO.: 2003195-00123US3 and US4
`Filed By: David L. Cavanaugh, Reg. No. 36,476
`Dominic E. Massa, Reg. No. 44,905
`Michael H. Smith, Reg. No. 71,190
`1875 Pennsylvania Ave. NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Email: David.Cavanaugh@wilmerhale.com
`Dominic.Massa@wilmerhale.com
`MichaelH.Smith@wilmerhale.com
`
`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 IPR2017-018431
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S OBSERVATIONS
`ON CROSS-EXAMINATION
`
`
`
` 1
`
` Case IPR2017-01844 has been consolidated with this proceeding.
`
`
`Filed By: David L. Cavanaugh, Reg. No. 36,476
`Dominic E. Massa, Reg. No. 44,905
`Michael H. Smith, Reg. No. 71,190
`1875 Pennsylvania Ave. NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Email: David.Cavanaugh@wilmerhale.com
`Dominic.Massa@wilmerhale.com
`MichaelH.Smith@wilmerhale.com
`
`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 IPR2017-018431
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S OBSERVATIONS
`ON CROSS-EXAMINATION
`
`
`
` 1
`
` Case IPR2017-01844 has been consolidated with this proceeding.
`
`
`
`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Response to Patent Owner’s Observations on Cross-Examination
`
`
`Petitioner submits this response to Patent Owner’s Observations on Cross
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`
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`Examination. Patent Owner (“PO”) presents twenty-one observations on Dr.
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`Shanfield’s testimony. While Petitioner believes that the testimony will be
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`appropriately viewed and weighed by the Board, the specific observations
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`presented by PO misstate or omit the full testimony of Dr. Shanfield, and are often
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`irrelevant, as specified below. All emphasis in the following Responses is added.
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`Response to Observation #1
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`
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`PO cites to Ex. 2232 at 56:17-58:2, 160:20-23, 167:14-18, 172:8-14, 175:22-
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`24, and 176:4-16 as allegedly showing paragraph 20 of Dr. Shanfield’s Reply
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`declaration was offered under the mistaken belief that claim 1 requires the film to
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`impart stress. PO’s observation mischaracterizes Dr. Shanfield’s testimony.
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`Contrary to PO’s assertions, Dr. Shanfield testified that the description in the ’501
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`patent “merely recognizes that a film can have multiple layers deposited on top of
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`each other” and that this “does not mean that other, partially adjacent, or even fully
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`adjacent, structures necessarily become part of the same film simply as a result of
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`being adjacent.” Ex. 1232, ¶20. PO’s observation also ignores Dr. Shanfield’s
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`repeated, unambiguous testimony on cross that the claims do not require stress: “Q.
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`Does that language require that the silicon nitride film apply stress? A. No. The
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`claim language doesn’t require stress.” Ex. 2232, 51:22-52:2; id., 30:4-6 (“A. …
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`But there is no requirement in the limitations of the first claim that it has to be a
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`1
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`
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Response to Patent Owner’s Observations on Cross-Examination
`
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`stress film.”); id. 52:21-53:6 (“Q. So it’s your opinion that in order for a silicon
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`nitride film to meet the limitations of Claim 1, I must induce stress? A. No. Q.
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`So the silicon nitride film that’s called out in Claim 1 isn’t required to apply stress
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`to meet the limitations of the claim? A. That’s correct, yes.”); see also Ex. 1302,
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`¶46 n. 3. PO’s observation also mischaracterizes Dr. Shanfield’s testimony at
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`56:17-58:2 and omits Dr. Shanfield’s confirmation on re-direct that this testimony
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`was “referring to the embodiment in the specification,” not what is required by the
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`claims. Ex. 2232, 144:14-145:6. PO’s observation also fails to note that the
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`immediately prior testimony makes clear that the cited testimony at 160:20-23 was
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`based on that a mistatement of the law. Ex. 2026, 159:5-160:23. When the law
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`was clarified, Dr. Shanfield confirmed, consistent with his earlier testimony from
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`the deposition and throughout this proceeding, that as a technical matter, the
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`challenged claims do not require stress. Id., 167:14-21, 171:9-172:14, 174:12-23,
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`175:2-15, 176:4-24, 177:11-19; Ex. 1302, ¶46 n. 3.
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`Response to Observation #2
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`
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`PO asserts that Dr. Shanfield offered contradictory testimony on whether a
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`gate is a film, citing Ex. 2232, 40:11-41:3; Ex. 2210, 311:14-312:8. PO selectively
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`quotes and mischaracterizes Dr. Shanfield’s testimony. In the first passage PO
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`cites, Dr. Shanfield testified that a gate is formed from a deposited film. See also,
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`Ex. 2210, 312:3-5 (“[S]ince gate metal is a film deposited -- a gate is formed from
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`2
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`
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Response to Patent Owner’s Observations on Cross-Examination
`
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`a film, is a gate a film? No. It's a gate.”). In the second passage, Dr. Shanfield was
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`responding to questions about whether “layers form the same film.” Ex. 2232,
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`40:1-5. He testified consistent with his earlier testimony that a silicon oxide gate
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`insulating layer has a different function than the film deposited on top of the gate
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`insulator to form the gate. Ex. 2232 at 40:21-41:3 (“An example where they're not
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`the same function in the ’501 is the gate insulator layer, which is silicon oxide
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`usually, is covered by then the gate electrode. And those two films are – have
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`different functions even though they're on top of each other. So I think a person
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`of skill in the art wouldn't view them as one and the same film.”).
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`Response to Observation #3
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`PO argues that Dr. Shanfield’s testimony that a film can have “a layer or
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`layers” means that two adjacent films would be layers of a single film, citing Ex.
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`2232 at 7:24-8:8. PO mischaracterizes Dr. Shanfield’s testimony by omitting his
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`testimony that the “layers of material” must be “on top of each other.” Ex. 2232
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`at 7:24-8:9 (“Q. So my question is, what was your working understanding of the
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`term "film" that you applied in opining on the claims in this case? A. The answer I
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`gave you is an example of that and I defined -- or I understood layer 20 as shown
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`here is an example of a silicon nitride film. It's a layer or layers of material, in this
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`case, that are silicon nitride or -- you know, that are on top of each other or a
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`single layer, silicon nitride being silicon and nitrogen and some hydrogen.”). Dr.
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`3
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Response to Patent Owner’s Observations on Cross-Examination
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`Shanfield has consistently testified that two adjacent films are not “layers” of a
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`single film. See Reply Decl., ¶¶20, 37-43; Ex. 2232 at 15:9-17, 20:19-216, 22:10-
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`23:2, 162:10-163:15.
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`Response to Observation #4
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`
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`PO argues the same testimony identified for Observation #3 somehow
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`refutes Dr. Shanfield’s testimony regarding layers of film. As explained for the
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`Response to Observation #3, PO omits Dr. Shanfield’s testimony that the “layer or
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`layers of material” must be “on top of each other.” As explained for the Response
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`to Observation #1, PO also mischaracterizes paragraph 20 of Dr. Shanfield’s Reply
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`Declaration.
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`Response to Observation #5
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`PO argues the same testimony identified for Observation #3 is also relevant
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`to Dr. Shanfield’s earlier testimony that “‘Thin films’ refer to one or multiple
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`layers of coverage over a surface,” quoting Ex. 2209, 55:2-4. As explained in
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`Response to Observation #3, PO omits Dr. Shanfield’s testimony that the “layer or
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`layers of material” are formed “on top of each other.” The testimony PO cites
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`simply confirms that Dr. Shanfield has consistently testified that films can have
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`multiple layers formed on top of each other. PO’s observation also ignores Dr.
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`Shanfield’s testimony that two separate films may be formed at different times
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`using plasma CVD. Ex. 2232 at 28:8-22 (“Q. So if the same manufacturing step is
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`4
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Response to Patent Owner’s Observations on Cross-Examination
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`performed twice, but it is separated by some time, you would consider that to be a
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`different process? A. In the case of a deposition of a thin film, it typically is. We'd
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`have to get more specific. I'm not saying that it's an absolute rule. The deposition
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`of silicon nitride in a plasma system in one case, and then in the next step a few
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`minutes later, those are different, in my view of -- those are separate process
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`steps. And the film is different because that's -- that's something that a person of
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`skill in the art knows about plasma deposition. So it has the same label. It's called
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`plasma CVD deposition. But there is a difference.”). As explained for
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`Observation #1, PO also mischaracterizes paragraph 20 of Dr. Shanfield’s Reply
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`Declaration.
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`Response to Observation #6
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`
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`PO argues Dr. Shanfield’s testimony that two layers of a PECVD deposited
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`at different times could still be “a film” supposedly contradicts his earlier
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`testimony, citing Exhibit 2232 at 26:23-27:10. PO again mischaracterizes Dr.
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`Shanfield’s testimony by selectively quoting his responses. Here, PO omits Dr.
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`Shanfield’s attempt to explain – before being interrupted by PO’s counsel – how
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`two layers formed at different times are different from separate, adjacent
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`structures, formed with separate processes. Ex. 2232 at 27:4-16 (“A. If a film -- a
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`plasma-deposited silicon nitride is put down and then another layer of silicon
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`nitride on top of that is put down, then in the context of the ’501 patent, that's still a
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`5
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Response to Patent Owner’s Observations on Cross-Examination
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`film, as is pointed out in the ’501 patent, doesn't have to be a single layer. Now, if
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`they're adjacent -- they're separate structures, I mean -- they're formed with a
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`separate process, you know, as I said either in time -- Q. If I can just interrupt
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`you there -- A. Yes.”)
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`Response to Observation #7
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`PO argues that Dr. Shanfield testified that performing a process step at a
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`different time does not necessarily mean it is a different process step and argues
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`that this somehow contradicts his earlier testimony, citing to Ex. 2232 at 26:8-22.
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`PO also claims that Dr. Shanfield admitted “layers like 20 and 23 in Misra that are
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`formed … by the same process steps,” without identifying any evidence of this
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`supposed admission. To the contrary, Dr. Shanfield consistently testified that
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`Misra’s layers 20 and 23 are formed through different process steps (Ex. 1201,
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`¶¶114-118) and that the sidewall spacer 23 and film 20 are not layers of a single
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`film because they are separate, adjacent structures, formed through separate
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`processes, that serve different functions. Ex. 1232, ¶19, 24-28, 49; Ex. 1201,
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`¶¶114-118.
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`Response to Observation #8
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`PO contends Ex. 2232 at 78:20-80:5 is relevant “because [of] [Dr.]
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`Shanfield’s [alleged] admission that a ‘film’ (like that in Xiang) can be made up of
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`layers of different materials….” PO’s contention is incorrect in view of the full
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`6
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Response to Patent Owner’s Observations on Cross-Examination
`
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`context where Dr. Shanfield explained the layers in Xiang are deposited
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`simultaneously in a single process step at 78:8-19 (“Q. So is Step 212 performed
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`twice to deposit the two layers 208 and 212 -- or 208 and 210 in Xiang? A. No.
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`The -- it's a single deposition, or they're deposited simultaneously. If they're
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`deposited in layers, those layers are deposited simultaneously on the left and the
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`right. Q. Why do you say that? A. That's the customary way of describing a
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`semiconductor process. If they were different layers, they would make that clear
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`because that would be unusual.”)
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`Response to Observation #9
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`PO again cites to Exhibit 2232 at 56:17-58:2 and 160:20-23,
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`mischaracterizing Dr. Shanfield’s testimony and ignoring the context and
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`clarification that Dr. Shanfield provides as cited in Response to Observation #1.
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`Response to Observation #10
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`PO again cites to Exhibit 2232 at 144:1-12, 145:1-147:8, and 160:20-23,
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`mischaracterizing Dr. Shanfield’s testimony and ignoring the context and
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`clarification that Dr. Shanfield provides as cited in Response to Observation #1.
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`Response to Observation #11
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`PO again cites to Exhibit 2232 at 56:17-58:2, 160:20-23, 167:14-173:3,
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`173:10-178:4, mischaracterizing Dr. Shanfield’s testimony and ignoring the
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`context and clarification that Dr. Shanfield provides as cited in Response to
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`7
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Response to Patent Owner’s Observations on Cross-Examination
`
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`Observation #1. Additionally, PO’s allegation of improper coaching is baseless.
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`As discussed for the Response to Observation #1, Dr. Shanfield has testified
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`unambiguously that the challenged claims do not require stress. Ex. 2026, 51:22-
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`52:2; id., 30:4-6; id. 52:21-53:6; see also Ex. 1302, ¶46 n. 3. On re-cross, he made
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`a misstatement of law and gave testimony based on that misunderstanding. Ex.
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`2026, 159:5-160:23. Even PO’s counsel recognized that Dr. Shanfield was
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`confused on a legal issue. Id., 159:5-160:19 (“… A… So stress is required in the
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`set of the dependent claims that relate to the independent claim. Q. Perhaps
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`you're confused…”). When the law was clarified, Dr. Shanfield confirmed,
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`consistent with his earlier testimony, that as a technical matter, claim 1 does not
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`require stress. Id., 167:14-21, 171:9-172:14, 174:12-23, 175:2-15, 176:4-24,
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`177:11-19.
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`Response to Observation #12
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`PO again cites to Exhibit 2232 at 45:3-18, 56:17-58:2, 144:1-12, 145:1-
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`147:8, and 160:20-23, ignoring the context and clarification that Dr. Shanfield
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`provides as cited in Response to Observation #1. Dr. Shanfield unambiguously
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`confirmed that the claimed silicon nitride film includes etch stop layers and that
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`Misra discloses the claimed silicon nitride film. Ex. 2232, 145:11-13 (“Q: Could
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`the silicon nitride film in Claim 1 be a silicon nitride etch stop layer? A. Yes, it
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`could”); 147:5-8 (“Q. Is it your opinion that Misra, in view of Tsai, discloses the
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`8
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Response to Patent Owner’s Observations on Cross-Examination
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`claimed silicon nitride film? … A. Yes, it is”); see also Ex. 1002, ¶¶91-102. This
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`observation is also irrelevant because Patent Owner has never disputed that Misra’s
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`silicon nitride film discloses the claimed silicon nitride film.
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`Response to Observation #13
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`PO argues that Dr. Shanfield’s testimony about multi-layer stress films in
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`the ’501 patent is inconsistent, citing Ex. 2232 at 42:20-24, 47:15-20, and 50:6-12
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`and Ex. 1232, paragraph 20. PO selectively quotes and mischaracterizes Dr.
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`Shanfield’s testimony in an attempt to create a conflict where none exists. In all of
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`the cited testimony, Dr. Shanfield consistently testified that a film can have
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`multiple layers, but that two adjacent films would not be considered layers of a
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`single film. See Ex. 2232 at 42:20-24, 47:15-20, and 50:6-12; Ex. 1232, ¶20.
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`Response to Observation #14
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`PO cites to Exhibit 2232 at 26:23-27:10, 44:10-19, 45:3-46:5, 47:15-48:13,
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`and 54:10-55:10 to contend that Dr. Shanfield offers inconsistent testimony. PO
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`selectively quotes and mischaracterizes Dr. Shanfield’s testimony. For example,
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`PO asserts: “This testimony [26:23-27:10] is relevant to Ex. 2232 at 47:15-48:13
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`(where [Dr.] Shanfield testified that a ‘silicon nitride film that’s applying stress and
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`an etch stop layer on top of it wouldn’t qualify’ as one film in the ‘context of the
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`’501 patent claims’) ….” Dr. Shanfield’s testimony is clear that he is speaking
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`about an embodiment in the specification, not a requirement of the claims. Dr.
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`9
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Response to Patent Owner’s Observations on Cross-Examination
`
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`Shanfield first disagrees with Patent Owner’s statement about the claims: “I
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`wouldn’t be prepared to make that general statement.” Ex. 2232, 47:20-21. Dr.
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`Shanfield then elaborated on the embodiment in the specification. Ex. 2232,
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`47:21-48:13 (“… in the specification where it talks about silicon nitride or internal
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`stress films, it says they don't have to be single layers. … So in that particular
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`statement, the specification is making clear … as explained in the specification
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`…”). Similarly, the other cited testimony questioned Dr. Shenfield on the
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`specification generally, not any of the claims specifically. Ex. 2232, 4:10-19
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`(testifying “in the context of the '501 patent” generally), 45:3-46:5 (same), 54:10-
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`55:10 (same). PO also omits Dr. Shanfield’s confirmation on re-direct that this
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`testimony was “referring to the embodiment in the specification,” not what is
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`required by the claims. Ex. 2232, 144:14-145:6. PO’s observation is also
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`irrelevant because PO acknowleges the challenged claims do not require stress.
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`PO’s Motion to Exclude (Paper 31) at 5.
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`Response to Observation #15
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`PO cites to Exhibit 2232 at 31:7-21, 45:22-46:5, 46:20-47:14, 48:14-50:5,
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`and 50:13-20 as allegedly relevant to Dr. Shanfield’s analysis of whether two
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`adjacent structures would be considered a single film. PO selectively quotes Dr.
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`Shanfield and mischaracterizes his testimony. Dr. Shanfield has consistently
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`testified that the ’501 patent includes an example of a multi-layer film that
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`10
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Response to Patent Owner’s Observations on Cross-Examination
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`provides stress to the substrate as a whole. Ex. 2232, 12:15-21, 14:2-8; Ex. 1232,
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`¶20. Dr. Shanfield has also explained that the claims of the ’501 patent do not
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`require the film to be a stress film. Ex. 2232, at 29:12-30:6 (“…. there's no
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`requirement in the limitations of the first claim that it has to be a stress film.”),
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`51:22-52:2 (“… No. The claim language doesn't require stress.”), 53:3-6 (same);
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`see also PO’s Motion to Exclude (Paper 31) at 5 (agreeing claims do not require
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`stress). PO omits Dr. Shanfield’s explanation that one reason two separate,
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`adjacent films would not be considered a single film is because each imparts a
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`separate stress field, whereas layers of a film formed on top of each other form a
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`single stress field. Ex. 1232, ¶¶38-43. PO also omits Dr. Shanfield discussion of
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`other relevant factors, such as whether two elements are separate structures,
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`formed through different processes, that serve different functions. Ex. 2232, 16:4-
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`17:7, 20:19-21:6, 151:7-13; Ex. 1232, ¶¶16, 19; Ex. 1202, ¶¶114-118.
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`Response to Observation #16
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`PO argues the testimony cited for Observation #15 is somehow inconsistent
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`with Dr. Shanfield's testimony regarding whether films formed through separate
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`processes would be considered layers of a single film. PO mischaracterizes Dr.
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`Shanfield’s testimony. Dr. Shanfield has consistently testified that the ’501 patent
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`includes an example of a multi-layer film that provides stress to the substrate as a
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`whole. Ex. 2232, 12:15-21, 14:2-8; Ex. 1232, ¶20. Dr. Shanfield also explains
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`11
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Response to Patent Owner’s Observations on Cross-Examination
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`that, more broadly, other factors are relevant, such as whether the films are formed
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`through separate process steps, whether they serve different functions, and whether
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`they would be considered separate structures. Ex. 2232, 16:4-17:7, 20:19-21:6,
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`151:7-13; Ex. 1232, ¶¶16, 19; Ex. 1201, ¶¶114-118.
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`Response to Observation #17
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`PO argues that Dr. Shanfield acknowledges in Ex. 2232 at 36:18-37:7 that
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`he did not appear to have cited Misra at 6:54-58 in his initial declaration and
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`argues this shows its citation in the Reply is improper. PO’s observation ignores
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`that the citation to Misra at Ex. 1204, 6:54-58 is responsive to PO’s questioning of
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`Dr. Shanfield on this specific disclosure and anchored in the Petition and testimony
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`of record. Ex. 2210, 262:6-24, 263:6-14; Paper 29, 1 (noting reply is responsive to
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`PO’s questioning of Dr. Shanfield and anchored in the petition); Reply, 2-3, 4-6
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`(noting PO’s cross-examination of Dr. Shanfield on Ex. 1204, 6:54-58 and its
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`failure to address his testimony in the POR), Pet., 40-43 (showing Misra discloses
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`the protruding gate).
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`Response to Observation #18
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`PO argues that Ex. 2232 at 38:3-8 shows the argument raised in the Reply
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`that Misra discloses using materials other than silicon nitride for element 23 relies
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`on Dr. Shanfield for a new argument. PO’s observation ignores that the discussion
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`of other materials for spacer 23 is responsive to PO’s questioning of Dr. Shanfield
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`12
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Response to Patent Owner’s Observations on Cross-Examination
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`and anchored in the Petition and testimony of record. Ex. 2210, 262:6-24, 263:6-
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`14; Paper 29, 1 (noting reply is responsive to PO’s questioning of Dr. Shanfield
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`and anchored in the petition); Reply, 2-3, 4-6 (noting PO’s cross-examination of
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`Dr. Shanfield on Ex. 1204, 6:54-58 and its failure to address his testimony in the
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`POR), Pet., 40-43 (showing Misra discloses the protruding gate).
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`Response to Observation #19
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`PO cites to Exhibit 2232 at 81:4-82:6 as allegedly showing layers 208 and
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`210 in Xiang have vertical and horizontal layers. PO is again mischaracterizing
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`Dr. Shanfield’s testimony. Dr. Shanfield never “admitted that layers 208 and 210
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`consist of a vertical layer and a horizontal layer” as PO asserts; rather, he testified
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`“I disagree with Dr. Glew on his description of the process,” (Ex. 2232 at 82:8-9)
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`at which point PO’s counsel cut him off before he could explain why, saying “If
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`your counsel wants to follow up with you, he can.” Ex. 2232, 82:10-11. And
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`indeed, on re-direct, Dr. Shanfield was given an opportunity to explain further,
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`testifying at 153:7-154:19: “The description that Dr. Glew gives of possible
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`processes, I believe, is not the correct description of what was done… Dr. Glew
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`described what he thought might be the process going from Figure 9 to Figure 10,
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`and I disagreed with his idea of what that process might be. He made it far too
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`complicated and, in my view, there's CMP being used. And it's simple … I
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`disagree with his complex characterization of a multiple-step process that would
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`13
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`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Response to Patent Owner’s Observations on Cross-Examination
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`have been much too expensive and complicated to really be used. And, again,
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`without going into detail, I think it could have been accomplished in two steps.”
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`See also, Ex. 1232, ¶¶23, 29, 31-32.
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`Response to Observation #20
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`
`PO cites to Exhibit 2232 at 153:7-154:19 and 164:2-165:2 as allegedly
`
`supporting Dr. Glew’s interpretation of Xiang; however, the cited portions of Dr.
`
`Shanfield’s testimony actually explain why Dr. Glew’s interpretation is incorrect at
`
`153:17-154:19 (“The description that Dr. Glew gives of possible processes, I
`
`believe, is not the correct description of what was done … I disagree with his
`
`complex characterization of a multiple-step process that would have been much
`
`too expensive and complicated to really be used. And, again, without going into
`
`detail, I think it could have been accomplished in two steps”), 164:5-11 (“I didn't
`
`say that was the only step between 9 and 10. I didn't mean to imply that. That was
`
`just shorthand for this is the CM -- I mean, that would be described by process
`
`engineers as the CMP step because the rest of it is pretty standard: depositing the
`
`two films and then planarizing it”) and 165:1-2 (“…it's a pretty simple jump from
`
`Figure 9 to Figure 10.”).
`
`Response to Observation #21
`
`
`
`PO cites to Ex. 2232 at 61:19-63:24 and 65:23-68:1, and argues this
`
`testimony is inconsistent with the specification of the ’501 patent. PO’s
`
`14
`
`
`
`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Response to Patent Owner’s Observations on Cross-Examination
`
`
`observation mischaracterizes Dr. Shanfield’s testimony. Dr. Shanfield simply
`
`testified there would be “some discontinuity in stress at the interface between the
`
`two separate structures: this structure 7 and 8a.” PO’s observation relies on
`
`unsupported and improper new attorney argument that purports to identify an
`
`inconsistency where none exists. PO never questioned Dr. Shanfield on this new
`
`theory and cites no evidence in support. PO’s argument is also wrong. The cited
`
`portion of the specification (Ex. 1001, 7:62-8:8) refer to a drop in stress from “1.5
`
`GPa” to “.3 GPa” at the interface. This is consistent with Dr. Shanfield’s
`
`testimony that there would be a “discontinuity” (in this case, a drop in stress from
`
`“1.5 GPa” to “.3 GPa”).
`
`
`
`Dated: August 22, 2018 Respectfully Submitted,
`
`
`
`/Michael Smith/________________
`Michael H. Smith, Reg. No. 71,190
`
`15
`
`
`
`U.S. Patent 7,893,501; IPR2017-01843
`Petitioner’s Response to Patent Owner’s Observations on Cross-Examination
`
`CERTIFICATE OF SERVICE
`I hereby certify that, on August 22, 2018, I caused a true and correct copy of the
`
`foregoing materials:
`
` Petitioner’s Response to Patent Owner’s Observations on Cross-
`
`Examination
`
`to be served via email on the following counsel of record as listed in Patent
`
`Owner’s Mandatory Notices:
`
`Gerald B. Hrycyszyn, Registration No. 50,474
`GHrycyszyn-PTAB@wolfgreenfield.com
`
`Richard F. Giunta, Registration No. 36,149
`RGiunta-PTAB@wolfgreenfield.com
`
`Edmund J. Walsh, Registration No. 32,950
`EWalsh-PTAB@wolfgreenfield.com
`
`Joshua Miller, admitted pro hac vice
`Joshua.Miller@wolfgreenfield.com
`
`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue
`Boston, MA 02210
`
`Respectfully Submitted,
`
`___/ Michael Smith /__________
`Michael H. Smith
`Registration No. 71,190
`
`i
`
`
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