Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 42
`Entered: October 2, 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 IPR2017-018431
`Patent 7,893,501 B2
`____________
`
`
`
`Before MELISSA A. HAAPALA, Acting Vice Chief Administrative Patent
`Judge, and JUSTIN T. ARBES, Administrative Patent Judge.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 Case IPR2017-01844 has been consolidated with Case IPR2017-01843.
`
`
`571-272-7822
`
`
`
`
`Paper 42
`Entered: October 2, 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 IPR2017-018431
`Patent 7,893,501 B2
`____________
`
`
`
`Before MELISSA A. HAAPALA, Acting Vice Chief Administrative Patent
`Judge, and JUSTIN T. ARBES, Administrative Patent Judge.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 Case IPR2017-01844 has been consolidated with Case IPR2017-01843.
`
`
`
`IPR2017-01843
`Patent 7,893,501 B2
`
`
`A conference call in the above proceeding was held on September 26,
`2018, among respective counsel for Petitioner and Patent Owner, and
`Judges Haapala, Arbes, and Chagnon. 2 Patent Owner requested the call to
`seek authorization to file additional briefing and evidence regarding two
`matters.
`First, in a previous Order dated September 14, 2018, the panel
`authorized Patent Owner to file a limited sur-reply responding to Petitioner’s
`argument in its Reply (Paper 22) that Misra (Ex. 1204) teaches that spacers
`23 may be formed of a material other than silicon nitride, such as thermally
`grown silicon dioxide. Paper 40. Patent Owner argued during the call that if
`Petitioner’s argument is considered, Patent Owner should be permitted to
`also file with its sur-reply an expert declaration with supporting evidence.
`Patent Owner stated that the new evidence would demonstrate that the
`structure Petitioner argues is taught by Misra is not enabled and that a person
`of ordinary skill in the art would not have understood Misra to disclose
`making spacers 23 out of thermally grown silicon dioxide. Patent Owner
`argued that both issues are “highly technical” and require expert testimony.
`Petitioner opposed Patent Owner’s request, arguing that Petitioner’s
`argument in the Reply was proper and that Patent Owner was aware of the
`issue and should have addressed it in Patent Owner’s Response because it
`originally arose during the cross-examination of Petitioner’s declarant. We
`took the matter under advisement.
`After further consideration, we are not persuaded that the Order
`should be modified to permit new evidence with Patent Owner’s sur-reply.
`
`2 A court reporter, retained by Patent Owner, was present on the call. Patent
`Owner subsequently filed a transcript of the call as Exhibit 2234.
`2
`
`
`
`
`
`IPR2017-01843
`Patent 7,893,501 B2
`
`As stated in the Order, we have not yet determined whether Petitioner’s
`argument regarding spacers 23 is within the proper scope of a reply, and will
`do so in the final written decision. See id. at 2 n.4; Paper 27 (Patent Owner’s
`identification of allegedly improper arguments in Petitioner’s Reply);
`Paper 28 (Petitioner’s response). If the argument is determined to be
`improper, it will not be considered. If the argument is determined to be
`proper, Patent Owner is provided the opportunity to file a sur-reply
`substantively responding to the argument. See Paper 40, 2 n.4. This is in
`accord with the recent update to the Office Patent Trial Practice Guide,
`which permits sur-replies without new evidence:
`Sur-replies to principal briefs (i.e., to a reply to a patent owner
`response or to a reply to an opposition to a motion to amend)
`normally will be authorized by the scheduling order entered at
`institution. The sur-reply may not be accompanied by new
`evidence
`other
`than
`deposition
`transcripts of
`the
`cross-examination of any reply witness. Sur-replies should
`only respond to arguments made in reply briefs, comment on
`reply declaration testimony, or point to cross-examination
`testimony.
`Trial Practice Guide Update (August 2018), 14, available at
`https://www.uspto.gov/sites/default/files/documents/
`2018_Revised_Trial_Practice_Guide.pdf. In addition to filing a substantive
`sur-reply, Patent Owner had the opportunity to file observations on the
`cross-examination testimony of Petitioner’s declarant, and in fact addressed
`the relevant testimony regarding spacers 23. See Paper 30, 11–12 (Patent
`Owner’s observations); Paper 35, 12–13 (Petitioner’s responses).
`We are not persuaded that a departure from the standard procedure to
`allow new evidence with Patent Owner’s sur-reply would be appropriate
`under the circumstances, given the substance of the parties’ arguments as
`
`
`
`3
`
`
`
`IPR2017-01843
`Patent 7,893,501 B2
`
`well as the timing of this proceeding and our obligation to “secure the just,
`speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R.
`§ 42.1(b). We reiterate that Petitioner’s argument regarding spacers 23, and
`any sur-reply Patent Owner files, will only be considered if we determine
`Petitioner’s argument is within the proper scope of a reply.
`Second, Patent Owner requested authorization for both parties to
`submit additional briefing and expert declarations regarding how a person of
`ordinary skill in the art would have understood certain disclosures in the
`Specification of the challenged patent, U.S. Patent No. 7,893,501 B2
`(Ex. 1201, “the ’501 patent”), specifically:
`(1) whether a person of ordinary skill in the art would have
`understood the ’501 patent to refer to gate insulating film
`5 and sidewall 7 as different films;
`(2) whether a person of ordinary skill in the art would have
`understood gate insulating film 5 and sidewall 7 to be
`formed of the same material; and
`(3) how a person of ordinary skill in the art would have
`understood the disclosures in the ’501 patent regarding
`the various materials described for forming gate
`insulating film 5, the process for forming gate insulating
`film 5 from those materials, and the disclosure that
`sidewall 7 is silicon oxide.
`Patent Owner argued that, if permitted, its brief and declaration would
`support Patent Owner’s proposed claim interpretation for the term “silicon
`nitride film” and respond to questions asked by the panel about the
`Specification of the ’501 patent during the oral hearing on September 6,
`2018. Petitioner opposed Patent Owner’s request.
`We are not persuaded that additional briefing and testimony on how a
`person of ordinary skill in the art would have understood the Specification of
`
`
`
`4
`
`
`
`IPR2017-01843
`Patent 7,893,501 B2
`
`the ’501 patent is warranted. All substantive briefing in this proceeding
`(other than Patent Owner’s authorized sur-reply) has been completed and the
`hearing has taken place. Both parties had the opportunity to propose
`interpretations for the challenged claims and advocate for those
`interpretations at the hearing, including referring to portions of the
`Specification that allegedly support the parties’ proposed interpretations and
`answering the panel’s questions regarding claim interpretation. The
`questions asked by the panel at the hearing related to determining the
`correctness of the parties’ proposed interpretations in light of the
`Specification. We do not see why further briefing and testimony is
`necessary at this late stage.
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s requests to submit additional briefing
`and evidence are denied, and the Order of September 14, 2018 (Paper 40),
`remains unchanged.
`
`
`
`
`5
`
`
`
`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
`
`
`
`
`6
`
`
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