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Taiwan Semiconductor Manufacturing Company, Ltd. v. GODO KAISHA IP BRIDGE...

Docket IPR2016-01439, Patent Trial and Appeal Board (July 15, 2016)
Jennifer Meyer Chagnon, Justin Arbes, Michael Fitzpatrick, presiding
Case TypeInter Partes Review
Patent8354726
Patent Owner GODO KAISHA IP BRIDGE 1
Petitioner Taiwan Semiconductor Manufacturing Company, Ltd.
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9 Refund Approval: Notice of Refund

Document IPR2016-01439, No. 9 Refund Approval - Notice of Refund (P.T.A.B. May. 8, 2017)
Petitioner’s request for a refund of certain post-institution fees paid on 07/15/2016 in the above proceeding is hereby granted.
The amount of $21,200 has been refunded to the Petitioner’s deposit account.
Case IPR2016-01439 Patent 8,354,726 The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial and Appeal Board End to End (PTAB E2E) system, accessible from the Board Web site at http://www.uspto.gov/PTAB.
For the PATENT OWNER:
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7 Institution Decision: Trial Instituted Document Institution Denied

Document IPR2016-01439, No. 7 Institution Decision - Trial Instituted Document Institution Denied (P.T.A.B. Jan. 27, 2017)
Petitioner Taiwan Semiconductor Manufacturing Company, Ltd. filed a Petition (Paper 2, “Pet.”) requesting inter partes review of claims 1, 4, 8–11, 13, 17–24, 26–28, 43, 46, 49, 50, and 52–62 of U.S. Patent No. 8,354,726 B2 (Ex. 1001, “the ’726 patent”) pursuant to 35 U.S.C. § 311(a).
Using the disclosed distance “enhances the carrier mobility in a channel of a field effect transistor including the first gate electrode, and provides the structure applicable to miniaturization of the semiconductor device.” Id. at col. 3, ll. 11–14.
“Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011).
For an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 418.
Further, an assertion of obviousness “‘cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
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3 Notice of Filing Date Accorded to Petition: Notice of Accord Filing Date

Document IPR2016-01439, No. 3 Notice of Filing Date Accorded to Petition - Notice of Accord Filing Date (P.T.A.B. Jul. 29, 2016)
Patent Owner may file a preliminary response to the petition no later than three months from the date of this notice.
For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013- 00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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8 Refund Request: Petitioners Request for Refund of Fees

Document IPR2016-01439, No. 8 Refund Request - Petitioners Request for Refund of Fees (P.T.A.B. Apr. 24, 2017)
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2 Petition: IPR2016 01439 Petition for Inter Partes Review fo US 8,354,726

Document IPR2016-01439, No. 2 Petition - IPR2016 01439 Petition for Inter Partes Review fo US 8,354,726 (P.T.A.B. Jul. 15, 2016)
Specifically, “[a] given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec.
Sys., U.S. Patent No. 8,354,726 Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmeyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)); see also Cooper Cameron Corp. v. Kvaerner Oilfield Products, Inc., 291 F.3d 1317 (Fed. Cir. 2002) (holding that a document that was distributed to three members and six participants to a joint venture project was prior art).
(Id.) Like the transistors fabricated on other portions of the Prescott microprocessor, the insulating film formed on the side surface of the PMOS pull-up transistor’s gate electrode is a combination of an oxide buffer layer and silicon nitride sidewall spacer.
Further, Prescott discloses that the “Si3N4 multilayer first pre-metal dielectric (PMD 1) covers the gate, and extends underneath the nitride sidewall spacers to fill the gap previously formed to allow the S/D salicide step.
(Id.) A POSA would thus have found it obvious to include the nitrogen containing SiO2 gate dielectric disclosed in Buchanan in the transistors used in the SRAM cell of Prescott to achieve known, predictable, and desirable results.
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6 Preliminary Response: Preliminary Response

Document IPR2016-01439, No. 6 Preliminary Response - Preliminary Response (P.T.A.B. Oct. 31, 2016)
To justify institution of an inter partes review, Petitioner’s papers must make a prima facie showing that, as a factual and legal matter for each asserted ground, Petitioner has a reasonable likelihood of proving at least one challenged
U.S. Patent No. 8,354,726 POSA would understand—the very subject for which one would most expect a petitioner to provide testimony supported by articulated expert analysis and a rational underpinning of evidence, rather than simple, unmediated parroting of the Petition’s arguments that has no evidentiary value.
A problem in the prior art recognized by the inventor of the ’726 patent was that a liner film 109 on a gate electrode 103 creates two types of stress on a channel area below the transistor, as illustrated in Figure 17, below.
Sys., Inc., 511 F.3d 1186, 1196 (Fed. Cir. 2008) (“The record ... does not show that an anonymous user skilled in the art in 1997 would have gained access to the FTP server and would have freely navigated through the directory structure to find the Live Traffic paper.”) The Declaration of Raymond Angers does not fill this void.
Petitioner points to the same disclosure of Prescott and, without explanation, simply makes the conclusory assertion that “A POSA would have understood that the silicon nitride layer covering the gates is ‘a stress-containing insulating film’ and ‘generates a tensile stress in a channel length direction in the first active region.’” Pet. 68.
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4 Mandatory Notice: Patent Owner Mandatory Notice

Document IPR2016-01439, No. 4 Mandatory Notice - Patent Owner Mandatory Notice (P.T.A.B. Aug. 2, 2016)
IP Bridge identifies the following judicial or administrative matters that would affect, or be affected by, a decision in this proceeding: Pending Action:  Godo Kaisha IP Bridge 1 v. Broadcom Limited et al, Case No. 2-16-cv- 00134 (E.D.
Case IPR2016-01439 Patent 8,354,726 1900 University Avenue, 6th Floor East Palo Alto, CA 94303-2284
Patent Owner IP Bridge believes this submission fulfills the requirements of
If any additional information is required, please contact the undersigned counsel at the address shown below.
The Commissioner is hereby authorized to charge any fees or costs associated with this submission and to credit any excess payments to Deposit Account No. 18-1945.
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