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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,
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`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2017-018431
`Patent 7,893,501
`____________
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`PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO
`EXCLUDE EVIDENCE
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`1 Case IPR2017-01844 has been consolidated with this proceeding. See Paper 10
`at 3.
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`TABLE OF CONTENTS
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`SHANFIELD’S IMPROPERLY COACHED DEPOSITION
`TESTIMONY SHOULD BE EXCLUDED ................................................. 1
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`I.
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`i
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`TABLE OF AUTHORITIES
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`CASES
`Universal Remote Control v. Universal Elecs.,
`IPR2014-01146 Paper No. 36 at 6-7 ..................................................................2, 4
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`RULES
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`Fed. R. Evid. 402 ....................................................................................................... 4
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`Fed. R. Evid. 611(c) ...............................................................................................2, 4
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`ii
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`I.
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`SHANFIELD’S IMPROPERLY COACHED DEPOSITION
`TESTIMONY SHOULD BE EXCLUDED
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`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. 2-6) 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. 2232 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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`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 5-6.
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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 6-7. Petitioner’s legal instruction and leading
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`1
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`questions which expressly incorporated that instruction constitute coaching.
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`Petitioner does not try to distinguish Universal Remote, address FRE 611(c), or
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`cite any support for its extraordinary assertion that counsel was authorized to
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`“clarif[y] the law for Dr. Shanfield” during questioning. Opp. at 8-9. Petitioner’s
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`assertion that the “legal representations” were not leading fails on its face. In
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`addition, as the examples below illustrate, counsel’s questions “were phrased
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`narrowly so as to elicit either a ‘yes’ or ‘no’ answer.” Universal Remote Control v.
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`Universal Elecs., IPR2014-01146 Paper No. 36 at 6-7.
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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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`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 8) 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. 2232 at 160:20-23. Petitioner’s assertion that Shanfield’s Ex.
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`1002 declaration analyzed claim 2 (Opp. 4-5) reinforces that Shanfield rubber-
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`stamped Petitioner’s arguments because, at deposition, Shanfield couldn’t identify
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`2
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`whether claim 2 recited stress (Ex. 2210 at 230:15-231:7) and claimed not to have
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`analyzed claim 2 (Ex. 2210 230:23-24), but then readily followed Petitioner’s
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`counsel’s lead and answered questions about claim 2 (Ex. 2232 at 144:1-12).
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`There are not simply “similarities” (Opp. 5 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. Thus, Petitioner’s
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`assertion that Shanfield offered only “technical testimony” (Opp. 2) is facially
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`false. His declarations parrot verbatim Petitioner’s legal arguments and his Ex.
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`1202 declaration contained a three page legal section (Ex. 1202, 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. 2232 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 8) 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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`3
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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 3-4) 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
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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
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`4
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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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`5
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