Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper 34
`Entered: July 14, 2017
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`and GLOBALFOUNDRIES U.S. INC.,
`Petitioners,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2016-01246 (Patent 7,126,174 B2)
`Cases IPR2016-01249 and IPR2016-01264 (Patent 6,538,324 B1)1
`____________
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`1 Case IPR2016-01247 has been consolidated with Case IPR2016-01246.
`GlobalFoundries U.S. Inc.’s motions for joinder in Cases IPR2017-00919,
`IPR2017-00920, IPR2017-00925, and IPR2017-00926 were granted. The
`parties are not authorized to use this style heading (i.e., identifying multiple
`cases) for any subsequent papers.
`
`

`

`IPR2016-01246 (Patent 7,126,174 B2)
`IPR2016-01249 and IPR2016-01264 (Patent 6,538,324 B1)
`
`
`Petitioner Taiwan Semiconductor Manufacturing Company, Ltd. and
`Patent Owner Godo Kaisha IP Bridge 1 requested a hearing in each of the
`above proceedings pursuant to 37 C.F.R. § 42.70(a). See IPR2016-001246,
`Papers 30, 31; IPR2016-01249, Papers 30, 32; IPR2016-01264, Papers 30,
`32. The requests are granted. Two hearings will be held.
`For Case IPR2016-01246, each party will have sixty (60) minutes of
`total time to present arguments. Petitioner bears the ultimate burden of
`proof that the challenged claims are unpatentable. Therefore, Petitioner will
`proceed first to present its case as to the challenged claims, and may argue
`its motion to exclude and reserve rebuttal time. Patent Owner then will
`respond to Petitioner’s presentation and may argue its motion to exclude and
`reserve rebuttal time. The parties may present arguments relied upon in all
`papers in the proceeding (e.g., Petitions, Response, Reply, and Sur-Reply) in
`their initial presentations. Petitioner then may use the rest of its time to
`respond to Patent Owner’s presentation on all matters. Finally, Patent
`Owner may use any remaining time only to address issues raised by
`Petitioner regarding Patent Owner’s motion to exclude.
`Cases IPR2016-01249 and IPR2016-01264 involve the same patent
`and similar asserted prior art. A combined hearing for both proceedings,
`therefore, is appropriate under the circumstances. Each party will have sixty
`(60) minutes of total time to present arguments for both proceedings.
`Petitioner will proceed first to present its case as to the challenged claims in
`both proceedings, and may argue its motions to exclude and reserve rebuttal
`time. Patent Owner then will respond to Petitioner’s presentation and
`present its own case with respect to its motions to amend, and may argue its
`motions to exclude and reserve rebuttal time. After that, Petitioner may use
`
`
`
`
`2
`
`
`
`

`

`IPR2016-01246 (Patent 7,126,174 B2)
`IPR2016-01249 and IPR2016-01264 (Patent 6,538,324 B1)
`
`the rest of its time to respond to Patent Owner’s presentation on all matters.
`Finally, Patent Owner may use any remaining time only to address issues
`raised by Petitioner regarding Patent Owner’s motions to amend and
`motions to exclude.
`The hearings for the three proceedings will take place on Monday,
`August 7, 2017,2 at the following times:
`Case(s)
`Time
`IPR2016-01246 10:00 AM Eastern Time
`
`IPR2016-01249
`and
`IPR2016-01264
`
`1:00 PM Eastern Time
`
`The hearings will be open to the public for in-person attendance on the ninth
`floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia.
`In-person attendance will be accommodated on a first come, first served
`basis. The Board will provide a court reporter for the hearings, and the
`reporter’s transcripts will constitute the official record of the hearings.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least seven business days prior to the hearings. The parties shall confer with
`each other regarding any objections to demonstrative exhibits, and file
`demonstrative exhibits with the Board at least two business days prior to the
`hearings. For any issue that cannot be resolved after conferring with the
`opposing party, the parties may file jointly a one-page list of objections at
`least two business days prior to the hearings. The list should identify with
`particularity which demonstrative exhibits are subject to objection and
`
`
`2 The date for the hearings has been changed from the originally scheduled
`August 8, 2017, to accommodate both hearings being held on the same day.
`
`
`3
`
`
`

`

`IPR2016-01246 (Patent 7,126,174 B2)
`IPR2016-01249 and IPR2016-01264 (Patent 6,538,324 B1)
`
`include a short statement (no more than one sentence) of the reason for each
`objection. No argument or further explanation is permitted. We will
`consider the objections and schedule a conference call if necessary.
`Otherwise, we will reserve ruling on the objections until the hearings or after
`the hearings. Any objection to demonstrative exhibits that is not presented
`timely will be considered waived. Each party also shall provide a hard copy
`of its demonstrative exhibits to the court reporter at the hearings.
`The parties are directed to St. Jude Med., Cardiology Div., Inc. v.
`Board of Regents of the Univ. of Mich., Case IPR2013-00041 (PTAB
`Jan. 27, 2014) (Paper 65), regarding the appropriate content of
`demonstrative exhibits. The parties are reminded that the presenter must
`identify clearly and specifically each demonstrative exhibit (e.g., by slide or
`screen number) referenced during the hearings to ensure the clarity and
`accuracy of the reporter’s transcripts. The parties also should note that one
`member of the panel will be attending the hearings electronically from a
`remote location and that if a demonstrative exhibit is not filed or otherwise
`made fully available or visible to the judge presiding over the hearings
`remotely, that demonstrative exhibit will not be considered. The judge
`presiding remotely will not be able to view the screen in the hearing room.
`The Board expects lead counsel for Petitioner and Patent Owner to be
`present at the hearings, although any back-up counsel may make the actual
`presentation, in whole or in part.3 If lead counsel for any party will not be in
`attendance at the hearings, the Board should be notified via a joint
`
`3 Counsel for Petitioner GlobalFoundries U.S. Inc. is permitted to attend the
`hearings, but may not present arguments. See, e.g., IPR2017-00925,
`Paper 13, 12. Should the parties have any questions regarding procedures
`for the hearings, the parties may request a conference call.
`
`
`4
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`

`

`IPR2016-01246 (Patent 7,126,174 B2)
`IPR2016-01249 and IPR2016-01264 (Patent 6,538,324 B1)
`
`conference call no later than two days prior to the hearings to discuss the
`matter.
`Requests for audio-visual equipment at the hearings are to be made
`five days in advance of the hearing date. The requests must be sent to
`Trials@uspto.gov. If the requests are not received timely, equipment may
`not be available on the day of the hearings. Further, if the parties have
`questions as to whether demonstrative exhibits would be sufficiently visible
`and available to all of the judges, the parties are invited to contact the Board
`at 571-272-9797.
`
`
`
`
`
`5
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`

`

`IPR2016-01246 (Patent 7,126,174 B2)
`IPR2016-01249 and IPR2016-01264 (Patent 6,538,324 B1)
`
`PETITIONER TAIWAN SEMICONDUCTOR MANUFACTURING
`COMPANY, LTD.:
`
`Darren M. Jiron
`E. Robert Yoches
`J. Preston Long
`Joshua L. Goldberg
`Stephen E. Kabakoff
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`darren.jiron@finnegan.com
`bob.yoches@finnegan.com
`jp.long@finnegan.com
`joshua.goldberg@finnegan.com
`stephen.kabakoff@finnegan.com
`
`
`PETITIONER GLOBALFOUNDRIES U.S. INC.:
`
`Kent Cooper
`LAW OFFICE OF KENT J. COOPER
`kent.cooper@kjcooperlaw.com
`
`Adam Floyd
`DORSEY & WHITNEY LLP
`floyd.adam@dorsey.com
`
`Christopher P. Carroll
`Shamita D. Etienne-Cummings
`WHITE & CASE, LLP
`christopher.carroll@whitecase.com
`setienne@whitecase.com
`
`
`
`
`
`
`6
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`

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`IPR2016-01246 (Patent 7,126,174 B2)
`IPR2016-01249 and IPR2016-01264 (Patent 6,538,324 B1)
`
`PATENT OWNER:
`
`Neil F. Greenblum
`Michael J. Fink
`Arnold Turk
`GREENBLUM & BERNSTEIN, P.L.C.
`ngreenblum@gbpatent.com
`mfink@gbpatent.com
`aturk@gbpatent.com
`
`
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`7
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