UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TOSHIBA CORPORATION, TOSHIBA MEMORY CORPORATION,
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC.
`Petitioners
`
`v.
`
`MACRONIX INTERNATIONAL CO., LTD.,
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-01632
`Patent 8,035,417
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S MOTION TO STRIKE
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TOSHIBA CORPORATION, TOSHIBA MEMORY CORPORATION,
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC.
`Petitioners
`
`v.
`
`MACRONIX INTERNATIONAL CO., LTD.,
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-01632
`Patent 8,035,417
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S MOTION TO STRIKE
`
`
`
`Case IPR2017-01632
`Attorney Docket No: 39931.0020IP1
`
`
`
`TABLE OF CONTENTS
`
`I. STATEMENT OF THE PRECISE RELIEF REQUESTED .............................. 1
`II. STATEMENT OF THE REASONS FOR THE RELIEF REQUESTED .......... 1
`A. Background .................................................................................................... 1
`B. The Board Should Strike Toshiba’s New Arguments and Expert
`Declaration .................................................................................................... 1
`1. Toshiba’s New Argument that Figures 3 and 4 of Yen Disclose the
`Same Embodiment ................................................................................ 1
`2. Toshiba’s Two New Claim Constructions ............................................ 3
`3. Consideration of Toshiba’s New Arguments Would Unfairly
`Prejudice Macronix ............................................................................... 5
`III. CONCLUSION ................................................................................................... 5
`
`
`
`
`i
`
`
`
`
`I.
`
`Case IPR2017-01632
`Attorney Docket No: 39931.0020IP1
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.20 and the Board’s August 17, 2018 e-mail
`
`authorizing filing of this motion, Patent Owner Macronix International Co., Ltd.
`
`(“Macronix”) moves to strike Sections III.A (on pages 2-6), IV.A (on pages 8-11),
`
`and IV.B (on pages 11-14) of Petitioner’s Reply (Paper 13 (“Reply”)) because
`
`these sections advance new arguments in violation of 37 C.F.R. § 42.23(b).
`
`Macronix also moves to strike Exhibit 1007, which is an expert declaration
`
`supporting the new arguments in Section III.A of the Reply.
`
`II.
`
`STATEMENT OF THE REASONS FOR THE RELIEF REQUESTED
`A. Background
`Petitioners Toshiba Corp., Toshiba Memory Corp. and Toshiba America
`
`Electronic Components, Inc. (collectively “Toshiba”) filed the Petition in this IPR
`
`on June 19, 2017, challenging claims 1-7, 11-16, and 18 of U.S. Patent No.
`
`8,035,417 (“the ’417 patent”). [Paper 1 (“Pet.”) at 4, 69.] An expert declaration
`
`by Dr. Noel R. Strader II accompanied the petition. [Ex. 1005.] Macronix filed its
`
`patent owner response on May 4, 2018. [Paper 12 (“Resp.”).] Toshiba filed its
`
`Reply and Ex. 1007 on August 10, 2018. [Reply.]
`
`B.
`
`The Board Should Strike Toshiba’s New Arguments and Expert
`Declaration
`1.
`Toshiba’s New Argument that Figures 3 and 4 of Yen
`Allegedly Disclose the Same Embodiment
`The Reply and Ex. 1007 assert for the first time that Figures 3 and 4 of Yen
`
`
`
`1
`
`
`
`
`depict the same embodiment. [Reply at 2-6; Ex 1007.] Neither the petition nor Dr.
`
`Case IPR2017-01632
`Attorney Docket No: 39931.0020IP1
`
`Strader’s initial declaration made that assertion. [See generally Pet.; Ex. 1005.]
`
`This new argument is improper. “It is of the utmost importance that
`
`petitioners in the IPR proceedings adhere to the requirement that the initial petition
`
`identify ‘with particularity’ the ‘evidence that supports the grounds for the
`
`challenge to each claim.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd.,
`
`821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3), and
`
`affirming Board’s rejection of new arguments presented in a reply). The APA
`
`mandates this strict disclosure for petitioners because patent owners must receive
`
`notice of the “matters of fact and law asserted,” and have a meaningful opportunity
`
`to respond and “to submit rebuttal evidence.” 5 U.S.C. §§ 554(b)(3), 556(d);
`
`Belden Inc. v. Bek-Tek LLC, 805 F.3d 1064, 1080-82 (Fed. Cir. 2015). For this
`
`reason, the Board cannot “base [its] patentability decision on late-arising factual
`
`assertions or theories.” Securus Techs. Inc. v. Global Tel*Link Corp., IPR2016-
`
`00996, 2017 WL 4899298, at *7 (PTAB Oct. 30, 2017).
`
`Toshiba’s belated assertion that Figures 3 and 4 of Yen depict the same
`
`embodiment is such a “late-arising factual assertion[].” Id. Although Dr. Strader
`
`now claims to have assumed that Figures 3 and 4 of Yen were a single embodiment
`
`all along, he tellingly does not identify anything in his previous declaration to
`
`support this assumption, much less justifying it. [Ex. 1007 ¶ 7.] If Dr. Strader
`
`
`
`2
`
`
`
`
`was relying on that assumption, he should have said so before now. Nor is it
`
`Case IPR2017-01632
`Attorney Docket No: 39931.0020IP1
`
`reasonable to assume that Figures 3 and 4 of Yen depict the same embodiment,
`
`since these two figures differ in numerous significant ways, such as different signal
`
`inputs, a different arrangement of transistors, and a missing set of OR gates. [Ex.
`
`2001 ¶¶ 109-112, Ex. 1003 (Yen) at 5:8-6:3, 6:23-46, Figs. 3-4.] Given these
`
`significant differences, Toshiba and Dr. Strader cannot belatedly conflate these two
`
`figures for the first time in the Reply and thus deprive Macronix of a meaningful
`
`chance to respond. Intelligent Bio-Sys., 821 F.3d at 1369.
`
`Toshiba also cannot justify this late argument by couching it as a response to
`
`proof problems and deficiencies identified in Macronix’s Response. See Apple Inc.
`
`v. Andrea Elecs. Corp., 2018 WL 3414463, at *6 (PTAB July 12, 2018) (refusing
`
`to consider new assertions made in a reply to overcome deficiencies identified in
`
`patent owner’s response). Toshiba’s new factual assertion simply “crosses the line
`
`from the responsive to the new.” See Ariosa Diagnostics v. Verinata Health, Inc.,
`
`805 F.3d 1359, 168 (Fed. Cir. 2015). The Board should strike this late argument.
`
`2.
`Toshiba’s Two New Claim Constructions
`Toshiba’s Reply also improperly relies on two claim construction arguments
`
`not made in its Petition. First, Toshiba advances a new antecedent basis theory
`
`under which it contends that the “combined output drive strength” limitation
`
`relates to the earlier “plurality of output buffer circuits” limitation. [Reply at 8-
`
`
`
`3
`
`
`
`
`11.] That argument was not in the Petition, which instead argued—incorrectly—
`
`Case IPR2017-01632
`Attorney Docket No: 39931.0020IP1
`
`that the term “comprising” somehow condones the disregard of other circuits in
`
`Yen that contribute to the alleged output drive strength. [Pet. at 36.]
`
`Second, Toshiba’s Reply advances a new construction of the phrase “the
`
`buffer enable signals and the complements of the buffer enable signals control
`
`pairs of transistors having opposite conductivity types” under which the plural term
`
`“pairs” can be satisfied by a single pair of transistors in each buffer. [Reply at 11-
`
`14.] Toshiba did not present this construction in its Petition. [Pet. at 39-40.] And,
`
`tellingly, Toshiba does not cite any evidence—intrinsic or extrinsic—supporting
`
`its new interpretation of this phrase, despite Macronix’s detailed explanation based
`
`on extensive analysis of the intrinsic evidence and corroboration from extrinsic
`
`evidence that show why “pairs” refers to more than one pair in each buffer. [Resp.
`
`at 35-41; Ex. 1001 (’417 Patent) at 6:65-7:28, 9:57-60, 11:67-12:3, 12:59-62; Ex.
`
`1002 (prosec. hist.) at 47-55, 80, 83, 92; Ex. 2001 (Dickens Decl.) at ¶¶ 77-86.]
`
`Toshiba’s belated attempt to present a new construction lacking intrinsic support is
`
`as meritless as it is untimely.
`
`Toshiba cannot “respond” to Macronix’s Response by relying on new claim
`
`constructions never presented in its Petition. The Board’s regulations expressly
`
`require a petitioner like Toshiba to disclose and apply constructions in the petition.
`
`See 37 C.F.R. § 42.104(b). Under this rule, the Board has rejected petitioners’
`
`
`
`4
`
`
`
`
`attempts to rely on new claim constructions in their replies, even if the new
`
`Case IPR2017-01632
`Attorney Docket No: 39931.0020IP1
`
`constructions could be viewed as “in some sense responsive” to the patent owner’s
`
`response. E.g., Acclarent, Inc. v. Albritton, IPR2017-00498, 2018 WL 3374755, at
`
`*9 (PTAB July 9, 2018) (“[A]llowing responsive arguments and evidence in a
`
`Petitioner’s reply does not permit a petitioner to address entirely new theories of
`
`unpatentability under a claim construction not contemplated in the petition.”).
`
`3.
`
`Consideration of Toshiba’s New Arguments Would
`Unfairly Prejudice Macronix
`Toshiba cannot deprive Macronix of a chance to respond by presenting these
`
`arguments and evidence for the first time at this late stage. Intelligent Bio-Sys.,
`
`821 F.3d at 1369 (“[T]he expedited nature of IPRs bring with it an obligation for
`
`petitioners to make their case in their petition to institute.”); Belden, 805 F.3d at
`
`1080-82. Moreover, the imminent oral hearing on September 14 makes a surreply
`
`an inadequate vehicle for Macronix to respond. Thus, the Board should strike
`
`Toshiba’s new arguments and evidence, or at least decline to consider them. See,
`
`e.g., Dell Inc. v. Realtime Data LLC, IPR2016-00972, 2018 WL 2247172, at *11-
`
`*13 (PTAB May 15, 2018). Indeed, the Board may strike or decline to consider
`
`Toshiba’s Reply entirely. Id. at *13; Intelligent Bio-Sys., 821 F.3d at 1369.
`
`III. CONCLUSION
`For the foregoing reasons, Macronix’s motion to strike should be granted.
`
`
`
`
`
`
`
`5
`
`
`
`Case IPR2017-01632
`Attorney Docket No: 39931.0020IP1
`
`Respectfully submitted,
`
`/Timothy W. Riffe/
`Timothy W. Riffe, Reg. No. 43,881
`Counsel for Patent Owner
`Macronix International Co., Ltd.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: August 21, 2018
`
`
`
`
`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (612) 337-2509
`Facsimile: (612) 288-9696
`
`
`
`
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on August
`
`21, 2018, a complete and entire copy of this Patent Owner’s Motion to Strike was
`
`provided via email, to the Petitioners by serving the email correspondence
`
`addresses of record as follows:
`
`Kevin C. Hamilton
`DLA Piper LLP (US)
`401 B Street, Suite 1700
`San Diego, CA 92101
`
`Steven L. Park
`DLA Piper LLP (US)
`One Atlantic Center
`1201 West Peachtree Street, Suite 2800
`Atlanta, GA 30309-3450
`
`Gerald T. Sekimura
`DLA Piper LLP (US)
`555 Mission Street, Suite 2400
`San Francisco, CA 94105
`
`Email: kevin.hamilton@dlapiper.com
`Email: steven.park@dlapiper.com
`Email: gerald.sekimura@dlapiper.com
`
`
`
`
`
`
`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
`
`
`
`
`
`
`
`
`A1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
