Case 3:13-cv-00579-MO Document 319 Filed 04/09/14 Page 1 of 16
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`UNITED STATES DISTRICT COURT
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`DISTRICT OF OREGON
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`PORTLAND DIVISION
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`Case No. 3:10-cv-954-MO (lead)
`Case No. 3:12-cv-1500-MO
`Case No. 3:13-cv-579-MO
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`OPINION AND ORDER
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`MENTOR GRAPHICS CORPORATION,
`an Oregon Corporation,
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`Plaintiff/Counter-defendant,
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`v.
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`EVE-USA, INC., a Delaware corporation; and
`SYNOPSYS EMULATION AND
`VERIFICATION S.A., formed under the laws
`of France,
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`Defendants/Counter-claimants.
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`EVE-USA, INC., a Delaware corporation; and
`SYNOPSYS EMULATION AND
`VERIFICATION S.A., formed under the laws
`of France,
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`Plaintiffs/Counter-defendants
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`v.
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`MENTOR GRAPHICS CORPORATION,
`an Oregon corporation,
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`Defendant/Counter-claimant.
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`1 – OPINION AND ORDER
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`Case 3:13-cv-00579-MO Document 319 Filed 04/09/14 Page 2 of 16
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`MOSMAN, J.,
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`In case no. 12-1500, the second of the three consolidated patent actions captioned above,
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`EVE-USA, Inc., and Synopsys Emulation and Verification S.A. (collectively “Synopsys”) move
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`[461]1 to amend their answer to Mentor Graphics Corporation’s (“Mentor Graphics”) complaint.
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`Synopsys seeks to add an affirmative defense and counterclaim accusing Mentor Graphics of
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`inequitable conduct in the prosecution of U.S. Patent No. 6,947,882 (“’882 patent”). Mentor
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`Graphics filed a response in opposition [467], and Synopsys replied [476]. For the reasons set
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`forth below, I DENY the motion.
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`BACKGROUND
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`The patents at issue in the consolidated cases concern methods of simulating an
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`integrated circuit design, allowing a manufacturer to ensure that a circuit will function as
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`intended before committing to the expense of manufacturing it en masse. The ’882 patent in
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`particular is directed at emulators, or hardware systems composed of reconfigurable elements
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`onto which a manufacturer can map the logic operations of the design it wishes to test. Within
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`the emulator, as within the circuit ultimately to be manufactured, data signals travel from one
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`logic operation to the next under the metronomic guidance of a clock signal. By watching the
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`operation of the emulated circuit design, the manufacturer can determine the nature and location
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`of any logic errors.
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`The ’882 patent describes methods of combining multiple data signals within one
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`reconfigurable logic device into a single signal for export to another reconfigurable logic device
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`within an emulation system. ’882 Patent col.2 l.10–21 (filed Sept. 24, 1999). This
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`“multiplexing” process is timed by a clock signal independent of the clocks that time operation
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`of the individual logic devices. Id. Independently clocked multiplexing allows large emulation
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`1 All docket numbers refer to the lead case, no. 10-954.
`2 – OPINION AND ORDER
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`Case 3:13-cv-00579-MO Document 319 Filed 04/09/14 Page 3 of 16
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`systems consisting of many reconfigurable logic devices to be divided into different “time
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`domains,” each controlled by a different clock signal. E.g., id. at col.7 l.3–9. Committing
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`different regions to the governance of different clock signals eliminates the danger that
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`distributing a single clock signal over what may be a very large emulation system will lead to
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`timing errors. See id. at col.1 l.59–col.2 l.7.
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`I.
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`The ’882 Patent and the Allegedly Material Prior Art
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`Synopsys’s inequitable conduct allegations center on Mentor Graphics’s failure to
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`disclose four prior art references while prosecuting the ’882 patent. Three of these references are
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`U.S. Patent Nos. 5,802,348 (“’348 patent”) and 6,233,148 (“’148 patent”) and U.S. Patent
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`Application No. 09/804,504 (“’504 application”). Because all three references share a common
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`specification and relate back to the ’348 patent’s filing date, the parties refer to them collectively
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`as the “’348 family.” The fourth undisclosed reference is U.S. Patent No. 5,548,794, to which
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`the parties refer by the name of its inventor, Yishay.
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`The ’348 patent family and Yishay also concern multiplexing multiple signals into a
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`single signal, but for transmission to an external device called a logic analyzer, not another
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`reconfigurable logic device within the same emulation system. ’348 Patent col.2 l.27– col.3 l.10
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`(filed Dec. 18, 1995); Yishay col.4 l.48–62 (filed Dec. 5, 1994). Synopsys argues that the ’348
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`patent family and Yishay disclose “independent clocking” within the meaning of the ’882 patent.
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`(Mem. in Supp. [462] at 4–6.)
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`II. Mentor Graphics’s Prosecution of the ’504 Application and ’882 Patent
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`Synopsys alleges that Mentor Graphics acquired IKOS Systems, Inc. (“IKOS”), another
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`emulation company, in March of 2002. (Mot. Ex. A [461-1] at ¶ 47.) An assignment record
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`filed with the Patent and Trademark Office (“PTO”) reflects that Mentor Graphics obtained from
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`3 – OPINION AND ORDER
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`Case 3:13-cv-00579-MO Document 319 Filed 04/09/14 Page 4 of 16
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`IKOS a portfolio of seventeen patents and eight pending applications, including the ’348 family.
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`(Ms. Klein’s Decl. Ex. 1 [468-1].)
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`After the acquisition, on December 10, 2002, IKOS delegated the prosecution of the ’504
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`application to Mentor Graphics’s outside prosecution counsel, Banner & Witcoff, Ltd. (“Banner
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`& Witcoff”). (Ex. 5 [468-5] at 2–3.) Mentor Graphics’s Senior Patent Counsel, Mark Porter,
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`signed the appointment form. Id. at 3. On March 21, 2003, Mentor Graphics appointed Banner
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`& Witcoff to prosecute the application that became the ’882 patent, also in a form signed by Mr.
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`Porter as Senior Patent Counsel. (Ex. 7 [468-6] at 6–7.) Transmittal forms identify Banner &
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`Witcoff attorney Christopher McKee as having power of attorney. (Ex. 5 [468-5] at 1; Ex. 7
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`[468-6] at 8.)
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`On July 8, 2004, the Patent and Trademark Office (“PTO”) rejected all claims in the ’504
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`application in a non-final office action. (Ex. 5 [468-5] at 4.) One of the examiner’s grounds for
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`the rejection was that claim 23 of the ’504 application was obvious in light of Yishay. Id. at 16.
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`Mentor Graphics expressly abandoned the ’504 application soon afterward. Id. at 18.
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`At some point during prosecution, the PTO rejected the claims in the ’882 patent as
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`anticipated by U.S. Patent No. 5,701,441 (“Trimberger”). (Ex. 7 [468-6] at 14.) On July 10,
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`2003, Banner & Witcoff attorney William Rauchholz argued that the claims in the application
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`were patentable over Trimberger in part because of subsequent amendments. Id. at 15–16, 19.
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`The PTO mailed a Notice of Allowance on March 22, 2004. Id. at 20. The examiner adopted
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`Mr. Rauchholz’s argument, reasoning that, unlike the ’882 patent, Trimberger did not describe
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`“clocking that is independent of the first time multiplexed interconnection and wherein the signal
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`routing clock signal is independent of the first and second clock signals.” Id. at 24–25.
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`4 – OPINION AND ORDER
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`Case 3:13-cv-00579-MO Document 319 Filed 04/09/14 Page 5 of 16
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`Synopsys filed a petition for inter partes review of the ’882 patent on September 26,
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`2012. (Ex. 9 [468-8] at 1, 61.) In part, Synopsys argued that a patent not at issue here had
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`anticipated ’882 by disclosing a method of multiplexing signals from multiple outputs using
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`“independent clocks.” (Ex. 10 [469-9] at 10.) The Patent Trial and Appeal Board rejected this
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`argument, finding that, though the prior art disclosed the use of independent clock signals
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`generally, it did not require the use of independent clocks to route data signals among multiple
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`reconfigurable logic devices within a single emulation system. Id. at 12–13.
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`III. The Present Motion
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`Synopsys now seeks to amend its answer in Case No. 12-1500 to include an affirmative
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`defense and counterclaim of unenforceability based on inequitable conduct. (Mem. in Supp.
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`[462] at 1.) Synopsys asserts that Mentor Graphics was aware that the ’348 family, including the
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`’504 application, taught the same “independent clocking” feature as the ’882 patent, yet failed to
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`disclose them during prosecution. Id. at 5. It argues also that the rejection of the ’504
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`application in light of Yishay demonstrated that Yishay was material, yet Mentor Graphics did
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`not disclose Yishay in the ’882 prosecution either. Id. at 6.
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`The deadline for amending pleadings passed on February 22, 2013. (See Order [287]
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`(adopting parties’ proposed case schedule); Klein Decl. Ex. 13 [468-10] at 2 (proposed case
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`schedule).)
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`DISCUSSION
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`Regional circuit law supplies the standard governing a party’s request for leave to amend
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`a pleading. Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1318 (Fed. Cir. 2009).
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`Where the proposed amendment alleges inequitable conduct, whether the claim “has been
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`pleaded with particularity under Rule 9(b) is a question governed by Federal Circuit law.” Id.
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`5 – OPINION AND ORDER
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`Case 3:13-cv-00579-MO Document 319 Filed 04/09/14 Page 6 of 16
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`Where a court-ordered deadline for amending pleadings has passed, a party seeking leave
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`to amend must both demonstrate “good cause” for deviating from the scheduling order under
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`Rule 16(b)(4) and satisfy the requirements for amendment under Rule 15. Johnson v. Mammoth
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`Recreations, Inc., 975 F.3d 604, 607–08 (9th Cir. 1992) (citing Forstmann v. Culp, 114 F.R.D.
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`83, 85 (M.D.N.C. 1987)). Whether “good cause” exists for allowing a late request for
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`amendment turns principally on “the diligence of the party seeking the amendment.” Id. at 609.
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`“If that party was not diligent, the inquiry should end.” Id.
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`A patent is unenforceable in its entirety if it was obtained, even if only in part, through
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`inequitable conduct. Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276, 1287 (Fed.
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`Cir. 2011) (en banc). A patent applicant engaged in inequitable conduct if she “misrepresented
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`or omitted material information with the specific intent to deceive the PTO.” Id. A
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`misrepresentation or omission regarding a patent claim is material if, but for the
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`misrepresentation or omission, the PTO would not have allowed the claim. Id. at 1291.
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`I.
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`Synopsys’s Diligence in Seeking Amendment
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`Good cause exists to permit untimely amendment if the party seeking it only recently
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`discovered facts that would support an allegation of inequitable conduct. See Formax Inc. v.
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`Alkar-Rapidpak-MP Equip. Inc., No. 11-208, 2013 WL 2368824, at *6 (E.D. Wis. May 29,
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`2013); Enzo Life Sci., Inc. v. Digene Corp., 270 F. Supp. 2d 484, 489 (D. Del. 2003). In Formax,
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`after the amendment deadline passed, two inventors testified at deposition that they knew that the
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`patent in suit and plaintiff’s prior art both disclosed “using tie rods which resist a separation
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`reaction force between the pump cylinder and driving mechanism.” 2013 WL 2368824, at *5.
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`This deposition testimony provided defendant for the first time with evidence that the plaintiff
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`had knowingly withheld material prior art. Id. at *5–*6. The court allowed the amendment. Id.
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`6 – OPINION AND ORDER
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`Case 3:13-cv-00579-MO Document 319 Filed 04/09/14 Page 7 of 16
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`at *6. Similarly, in Enzo, an inventor testified at deposition that the prior art “disclosed as many
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`as five affinities,” despite having declared during prosecution that it disclosed only two affinities.
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`270 F. Supp. 2d at 488. The defendant moved to amend its answer to allege inequitable conduct
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`within two months of learning of the inventor’s misrepresentation. Id. at 486, 488. The court
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`observed that the defendant was “prudent” to wait until it had the necessary facts before seeking
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`to amend, though the deadline for doing so had passed. Id. at 489.
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`Synopsys argues that it sought leave to amend immediately after learning from two
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`“critical depositions” that specific agents of Mentor Graphics had withheld material prior art
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`during prosecution of the ’882 patent. (Mem. in Supp. [462] at 10–11.) According to Synopsys,
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`Mr. Porter’s and General Counsel and Vice President Dean Freed’s statements at deposition,
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`both taken on December 19, 2013, revealed for the first time that Mr. Porter withheld the ’504
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`application with knowledge of its materiality in order to induce the PTO to issue the ’882 patent.
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`The new information Synopsys purports to have divined from the depositions concerns
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`Mr. Porter’s supervisory role in Mentor Graphics’s patent prosecutions. (Mot. Ex. A [461-1] at
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`¶ 52.) Mr. Porter testified that he was responsible for reviewing the intellectual property of
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`companies that Mentor Graphics sought to acquire, and therefore “certainly would have
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`reviewed the [IKOS] patents and patent applications.” Id. (alteration in original). Mr. Freed
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`testified that Mr. Porter held “discretion” with regard to whether to disclose the patents and
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`applications acquired from IKOS during Mentor Graphics’s patent prosecutions. Id. at ¶ 53. He
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`also testified that whether to abandon an application was committed to Mr. Porter’s discretion.
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`Id. at ¶ 69. Synopsys infers from these general statements regarding Mr. Porter’s supervisory
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`powers that (1) he would have known that the ’504 application was material to the prosecution of
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`the ’882 patent, (2) he decided that the ’504 application would not be disclosed, and (3) he chose
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`7 – OPINION AND ORDER
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`Case 3:13-cv-00579-MO Document 319 Filed 04/09/14 Page 8 of 16
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`to abandon the ’504 application in order to secure a longer term of protection for the identical
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`“independent clocking” feature of the ’882 patent. (Mem. in Supp. [462] at 6, 14–15, 17.) As in
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`Formax and Enzo, it argues, it did not have the facts it needed to allege inequitable conduct until
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`these depositions established Mr. Porter’s role. Id. at 12.
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`Synopsys also argues that it only lately learned that specific Banner & Witcoff attorneys
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`participated in Mentor Graphics’s alleged inequitable conduct. It asserts that a privilege log
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`disclosed by Banner & Witcoff in December of 2013 reveals that Mr. McKee oversaw
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`prosecution of the ’504 application and ’882 patent. Id. at 6. Its answer also alleges inequitable
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`conduct against Mr. Rauchholz, but Synopsys does not attempt to argue that it could not have
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`learned of his role before the amendment deadline. See id. at 14–15.
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`Mentor Graphics argues in response that the depositions and privilege log taught
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`Synopsys nothing that it could not have learned from previous discovery and publicly disclosed
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`information. (Opp’n [467] at 11–13.) It notes that the prosecution histories of the ’504
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`application and the ’882 patent make the roles of Mr. Porter and Mr. McKee obvious. Id. at 11.
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`For example, Mr. Porter’s signature on the power of attorney forms assigning prosecution to
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`Banner & Witcoff, above a line describing him as Senior Patent Counsel, should have alerted
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`Synopsys to his supervisory role. Id. Further, Mentor Graphics argues that Banner & Witcoff’s
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`privilege log reveals only that Mr. McKee oversaw all of Mentor Graphics’s patent prosecutions,
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`not merely the ’882 patent. Id. at 13. This Synopsys could have learned from the publicly
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`available power of attorney forms. Id. Unlike in Formax and Enzo, Mentor Graphics argues,
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`Synopsys learned nothing specific during recent discovery that would suggest that any particular
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`person withheld material information. Id. at 12–13.
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`8 – OPINION AND ORDER
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`Case 3:13-cv-00579-MO Document 319 Filed 04/09/14 Page 9 of 16
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`I have reservations as to whether Synopsys has diligently pursued the facts necessary to
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`allege inequitable conduct. Certainly the lately discovered evidence is not as powerful as in
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`Formax and Enzo, where the patents’ inventors all but admitted to deliberate misrepresentations
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`or omissions. Instead, at most, the December 2013 depositions taught Synopsys that Mr. Porter
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`reviewed the IP holdings Mentor Graphics acquired from IKOS and had the discretion to direct
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`abandonment of applications. I doubt whether such broad facts concerning Mr. Porter’s
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`supervisory powers justify bringing a claim of inequitable conduct more than a year after the
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`amendment deadline has passed. I decline to resolve the issue, however, because I find that
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`amendment would be futile.
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`II.
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`Futility of Amendment
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`Under Rule 15 of the Federal Rules of Civil Procedure, leave to amend should be freely
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`granted absent such factors as “undue delay, bad faith or dilatory motive . . . , repeated failure to
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`cure deficiencies . . . , undue prejudice to the opposing party . . . , [and] futility of amendment.”
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`Foman v. Davis, 371 U.S. 178, 182 (1962). Synopsys argues that it does not seek amendment
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`for an improper purpose and that amendment would not cause undue delay or prejudice. (Mem.
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`in Supp. [462] at 12–13.) Mentor Graphics does not dispute these contentions. Nor does either
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`party assert that Synopsys has failed to cure deficiencies in prior proposed amendments.
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`Whether to grant leave to amend therefore turns on whether amendment would be futile.
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`Amendment is futile if the amended pleading fails to state a claim on which relief may be
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`granted. E.g., Vaughan v. California, No. 10-1179, 2013 WL 4517294, at *1 (S.D. Cal. Aug. 23,
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`2013). The facts on which a claim of inequitable conduct is predicated must be pleaded with
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`particularity in accordance with Rule 9(b). Exergen, 575 F.3d at 1326. This requires that the
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`pleading set forth “the specific who, what, when, where, and how of the material
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`9 – OPINION AND ORDER
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`Case 3:13-cv-00579-MO Document 319 Filed 04/09/14 Page 10 of 16
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`misrepresentation or omission.” Id. at 1328. The facts alleged must give rise to the inferences
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`that “a specific individual (1) knew of the withheld information or of the falsity of the material
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`misrepresentation, and (2) withheld or misrepresented this information with a specific intent to
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`deceive the PTO.” Id. at 1328–29.
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`Here, the allegations in Synopsys’s proposed amended answer fail to support an inference
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`either that (1) the ’348 family and Yishay are material to any claim in the ’882 patent or that (2)
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`any specific person intended to deceive the PTO.
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`A.
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`Materiality
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`A claim of inequitable conduct must explain why “the withheld information is material
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`and not cumulative” and how “an examiner would have used this information in assessing the
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`patentability of the claims.” Exergen, 575 F.3d at 1329–30. Since Therasense, withheld
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`information is material only if its nondisclosure was a “but for” cause of the PTO’s allowance of
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`the claims. 649 F.3d at 1291–92.
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`Synopsys argues that the amended answer explains how the ’348 family and Yishay are
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`material to the ’882 patent application. (Mem. in Supp. [462] at 16.) The answer alleges that the
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`’348 family discloses the same “independent clocking” limitation as the ’882 patent. (Mot. Ex.
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`A [461-1] at ¶¶ 60–61.) For that reason, it asserts, the patent examiner would have determined
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`that the ’348 family anticipates the ’882 patent if proper disclosure had been made, and the ’882
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`patent would not have issued. Id. at ¶ 62. Synopsys does not present any specific reason why
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`Yishay is material. To the contrary, I do not believe that the broad concept of independent
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`clocking was material to the examiner’s decision to allow the claims in the ’882 patent. To
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`explain why, I must briefly describe the inventions disclosed in the ’348 family and Yishay.
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`10 – OPINION AND ORDER
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`Case 3:13-cv-00579-MO Document 319 Filed 04/09/14 Page 11 of 16
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`The ’348 patent family is directed generally to methods of exposing the internal logic
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`operations of a circuit design under test to an external, commercially available “logic analyzer.”
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`’348 Patent col.2 l.27–60. A complex logic circuit will have a vast number of individual logic
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`components, each performing a different operation. Id. The circuit itself will have relatively few
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`outputs, however, leaving its internal operations mostly invisible to external devices. Id. The
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`’348 family addresses this problem by incorporating a multiplexing device into the design under
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`test. Id. col.3 l.1–10. The multiplexing process is timed by a clock signal independent of the
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`clock that governs the design under test itself. Id. Similarly, Yishay teaches the use of a
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`“multiplexed bus” to export data from a design under test to a logic analyzer. Yishay col.4 l.48–
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`62. Synopsys asserts that the ’348 patent’s use of independent clock signals to control operation
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`of the design under test and to multiplex data signals for export to a logic analyzer is the same
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`“independent clocking” as the ’882 patent teaches. (Mot. Ex. 1 [461-1] at ¶ 60.) Again, it does
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`not attempt to explain how Yishay is material.
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`I do not believe that these references’ reliance on the broad concept of independent
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`clocking would have troubled the patent examiner. Both in issuing the ’882 patent over
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`Trimberger and in denying Synopsys’s petition for inter partes review, the examiner found that
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`the ’882 patent’s use of independent clock signals to multiplex and route data signals within a
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`single emulation device set the ’882 patent apart from prior art. (Ms. Klein’s Decl. Ex. 7 [468-6]
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`at 24–25; Ex. 10 [468-9] at 12–13.) Indeed, in its decision not to institute inter partes review, the
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`examiner found that the ’882 patent was not anticipated by prior art that also described the use of
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`independent clock signals. (Ex. 10 [468-9] at 12–13.) The ’348 patent and Yishay, to the extent
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`that they describe independent clocking at all, teach its use in order to route signals from within
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`an emulator to an external device. Neither anticipates the specific use of independent clocking
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`11 – OPINION AND ORDER
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`Case 3:13-cv-00579-MO Document 319 Filed 04/09/14 Page 12 of 16
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`that the examiner found to distinguish the ’882 patent over other prior art. Because neither
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`reference teaches the use of independent clocking to route signals among reconfigurable logic
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`devices in a single emulation system, neither is material to the ’882 patent.2
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`B.
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`Specific Intent To Deceive the PTO
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`The parties disagree initially concerning whether the Federal Circuit’s recent en banc
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`decision in Therasense heightened the standard for judging the sufficiency of an allegation of
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`intent to deceive. I do not understand the Therasense opinion to disturb the pleading standard.
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`Under the applicable standard, I conclude that Synopsys’s proposed amended answer does not
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`allege sufficient facts to permit a plausible inference that any specific person intended to deceive
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`the PTO.
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`1.
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`Pleading Standard
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`In Exergen, the Federal Circuit set forth the standard for pleading intent to deceive as
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`follows:
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`[A] pleading of inequitable conduct under Rule 9(b) must include sufficient
`allegations of underlying facts from which a court may reasonably infer that a
`specific individual (1) knew of the withheld material information or of the falsity
`of the material misrepresentation, and (2) withheld or misrepresented this
`information with a specific intent to deceive the PTO.
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`575 F.3d at 1328–29. The court defined “reasonable inference” as “one that is plausible and that
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`flows logically from the facts alleged, including any objective indications of candor and good
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`2 Synopsys asserts that the ’348 family and Yishay are not properly considered in determining whether its proposed
`amendment is futile because the court is bound to accept its factual allegations as true. (Reply [476] at 2–3.) To the
`contrary, its proposed amended answer incorporates both by reference. A document not attached to a pleading “may
`be incorporated by reference . . . if the [pleader] refers extensively to the document or the document forms the basis
`of the [pleader’s] claim.” United States v. Ritchie, 342 F.3d 903, 908 (9th Cir. 2003). Synopsys’s proposed
`amended answer refers to the ’348 family in general or the ’504 application in particular in no less than fourteen
`paragraphs. (Mot. Ex. A [461-1] at ¶¶ 41, 58–63, 65–70, 73.) This amounts to extensive reference. Yishay appears
`in only two paragraphs, id. at ¶¶ 61, 73, but the proposed amended answer makes clear that Synopsys’s inequitable
`conduct charge centers on the nondisclosure of Yishay as well as of the ’348 family. Both therefore “form[] the
`basis” of Synopsys’s claim. Because the proposed amended answer incorporates them by reference, I may consider
`the content of the ’348 family and Yishay in determining whether amendment would be futile.
`12 – OPINION AND ORDER
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`Case 3:13-cv-00579-MO Document 319 Filed 04/09/14 Page 13 of 16
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`faith.” Id. at 1329 n.5. Two years later, sitting en banc, the court reiterated that a district court
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`may find that the defendant intended to deceive the PTO only if that conclusion is “‘the single
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`most reasonable inference able to be drawn from the evidence.’” Therasense, 649 F.3d at 1290–
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`91 (quoting Star Sci., Inc. v. R.J. Reynolds Tobaco Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008)).
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`The court did not address whether this heightened standard of proof of intent to deceive affected
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`the pleading standard announced in Exergen. Months after the Therasense opinion issued, a
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`three-judge panel of the Federal Circuit again cited Exergen for the standard to apply at the
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`pleading stage. See Delano Farms Co. v. Cal. Table Grape Comm’n, 655 F.3d 1337, 1350 (Fed.
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`Cir. 2011) (holding that an inequitable conduct claimant must allege facts allowing the court to
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`“reasonably infer” that a specific person intended to deceive the PTO).
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`Synopsys points out two district courts that have continued to apply Exergen at the
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`pleading stage, among them the District of Oregon. See Cyber Acoustics, LLC v. Belkin Int’l,
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`Inc., --- F. Supp. 2d ---, No. 13-1144, 2013 WL 6842755, at *4 (D. Or. Dec. 27, 2013) (quoting
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`the Exergen standard); Wyeth Holdings Corp. v. Sandoz, Inc., No. 09-955, 2012 WL 600715, at
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`*7–8 (D. Del. Feb. 3, 2012) (determining that Therasense did not affect the Exergen pleading
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`standard), adopted by 2012 WL 749378. Mentor Graphics, on the other hand, cites three district
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`courts for the proposition that, in light of Therasense, a claim of inequitable conduct must allege
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`facts from which the “single most reasonable inference” is intent to deceive. See VDF
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`FutureCeuticals, Inc. v. Sandwich Isles Trading Co., Inc., No. 11-288, 2011 WL 6820122, at *6
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`(D. Haw. Dec. 27, 2011) (concluding that Therasense “tightened” the pleading standard);
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`Hansen Mfg. Corp. v. Enduro Sys., Inc., No. 11-4030, 2011 WL 5526627, at *4 (D.S.D. Nov. 14,
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`2011) (same); Quest Software, Inc. v. Centrify Corp., No. 10-859, 2011 WL 5508820, at *2–3
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`(D. Utah Nov. 9, 2011) (applying the Therasense standard in a motion to dismiss).
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`13 – OPINION AND ORDER
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`Case 3:13-cv-00579-MO Document 319 Filed 04/09/14 Page 14 of 16
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`I read Therasense as setting forth the standard of proof at trial, not the standard for
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`weighing the sufficiency of the factual allegations in the pleading. Three months elapsed
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`between the Federal Circuit’s opinions in Therasense and Delano Farms. The Delano Farms
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`panel therefore had plenty of time to determine whether the en banc court’s opinion in
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`Therasense required any revision of the pleading standard. The court’s restatement of the
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`Exergen standard demonstrates that it judged no revision to be necessary. I will therefore apply
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`Exergen’s “reasonable inference” standard to the facts Synopsys alleges in support of its
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`assertion that specific persons at Mentor Graphics intended to deceive the PTO.
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`2.
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`Sufficiency of the Allegations
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`A court “cannot assume that an individual, who generally knew that a reference existed,
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`also knew of the specific material information contained in that reference.” Exergen, 575 F.3d at
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`1330 (emphasis omitted). A pleading that alleges only that a patentee was aware of a prior art
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`reference therefore does not support a reasonable inference that the patentee knew that any
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`specific information within the reference was material to its patent application. See id.
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`Synopsys argues that its proposed amended answer permits a court reasonably to infer
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`that Mr. Porter and the “attorneys at Banner & Witcoff” intended to deceive the PTO by
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`withholding Yishay and the ’348 family. (Mem. in Supp. [462] at 17.) It asserts that these
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`actors’ roles in prosecuting the ’504 application and the ’882 patent support an inference that
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`they knew that the ’348 family and Yishay disclosed “independent clocking.” Id. (citing Mot.
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`Ex. A [461-1] at ¶¶ 63–66.) It argues in turn that this inference of knowledge of the ’348 family
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`and Yishay’s materiality supports an inference that Mr. Porter and Banner & Witcoff
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`intentionally withheld the prior references from the Patent Office. Id. (citing Mot. Ex. A [461-1]
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`at ¶¶ 67–70). Finally, it argues that Mr. Porter’s power to direct abandonment of applications
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`14 – OPINION AND ORDER
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`

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`Case 3:13-cv-00579-MO Document 319 Filed 04/09/14 Page 15 of 16
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`suggests that he decided to abandon the ’504 application in this case in order to favor the later
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`priority date of the ’882 patent. Id. (citing Mot. Ex. A [461-1] at ¶¶ 69–70.)
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`Squeeze as it might, Synopsys has extracted no blood from this turnip. That Mr. Porter
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`supervised prosecution of the ’504 application supports an inference only that he was generally
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`aware of its existence. Under Exergen, that fact is insufficient to allow a court to infer that Mr.
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`Porter knew of any particular material information contained within the application. The same
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`reasoning applies to Mr. McKee and the other attorneys at Banner & Witcoff. Because Mr.
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`Porter’s supervisory role at most permits an inference that he was generally aware of the ’504
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`application, his decision to direct its abandonment also may not reasonably be assigned any
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`nefarious meaning.
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`Synopsys’s proposed amended answer offers one final allegation in support of Mentor
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`Graphics’s alleged intent to deceive the PTO in prosecuting the ’882 patent. The answer
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`observes that the Northern District of California found Mentor Graphics to have engaged in
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`inequitable conduct in a previous action. (Mot. Ex. A [461-1] at ¶ 71 (citing Mentor Graphics
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`Corp. v. Quickturn Design Sys., No. 00-1030 (lead case), 2003 U.S. Dist. LEXIS 16197, at *12,
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`*20 (N.D. Cal. July 30, 2003)).) It also alleges that Mentor Graphics failed to alter its policies
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`“in order to avoid similar instances of inequitable conduct in the future.” Id. at ¶ 72.
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`That Mentor Graphics was found to have acted inequitably in prosecuting an unrelated
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`set of patents has no bearing on whether it did so in this case. Synopsys has offered no evidence
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`suggesting that the Quickturn case bears any “close relation” to the prosecution of the ’882
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`patent, as would be required to consider it as evidence of intent under Rule 404(b) of the Federal
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`Rules of Evidence. See McNeil-PPC, Inc. v. Perrigo Co., 516 F. Supp. 2d 238, 258 n.9
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`(S.D.N.Y. 2007). Further, its allegation that Mentor Graphics failed to implement any policy
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`15 – OPINION AND ORDER
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`

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`Case 3:13-cv-00579-MO Document 319 Filed 04/09/14 Page 16 of 16
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`changes after the Quickturn inequitable conduct finding does not support the inference that, on
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`this specific occasion, some specific person knew of specific material information within the
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`’504 application or any other undisclosed reference.
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`Synopsys’s proposed amended answer fails to allege any facts from which a court may
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`reasonably infer that Mr. Porter, the attorneys at Banner & Witcoff, or any other agent of Mentor
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`Graphics knew of any specific information within the ’348 family or Yishay. The proposed
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`amendment therefore does not support an inference of specific intent to deceive.
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`CONCLUSION
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`Even if Synopsys diligently pursued the facts it needed in support of its affirmative
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`defense and counterclaim of inequitable conduct, the proposed amendment is futile for two
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`independent reasons: the undisclosed references are not material to the claims in the ’882 patent,
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`and the facts alleged do not support a reasonabl