Case 3:10-cv-00954-MO Document 524 Filed 06/04/14 Page 1 of 3
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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 3:10-cv-00954-MO Document 524 Filed 06/04/14 Page 2 of 3
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`MOSMAN, J.,
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`EVE-USA, Inc., and Synopsys Emulation and Verification S.A. (collectively,
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`“Synopsys”) move for partial summary judgment on Mentor Graphics Corporation’s (“Mentor
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`Graphics”) counterclaims in case no. 13-579 on grounds of claim preclusion. (Mot. [371] at 2.)1
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`I took the motion under advisement [416] after hearing oral argument on September 24, 2013.
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`On March 5, 2014, I ordered [482] supplemental briefing on the question whether the ZeBu
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`emulators at issue in Mentor Graphics’s counterclaims are “essentially the same” as those it
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`accused of patent infringement in a 2006 action against EVE-USA, Inc. Mentor Graphics’s
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`supplemental brief also raises the issue of whether, in light of recent Federal Circuit opinions, the
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`claim preclusion inquiry no longer turns on whether the presently and formerly accused products
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`are “essentially the same.” (Supp. Opp. [490] at 2–4.) I now GRANT Synopsys’s motion.
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`For at least two decades, the Federal Circuit has held that judgment on a claim of
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`infringement against a product bars a later infringement claim against a different product if the
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`two products are “essentially the same.” Nystrom v. Trex Co., Inc., 580 F.3d 1281, 1285 (Fed.
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`Cir. 2009); Roche Palo Alto LLC v. Apotex, Inc., 531 F.3d 1372, 1379 (Fed. Cir. 2008); Foster v.
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`Hallco Mfg. Co., Inc., 947 F.2d 469, 479–80 (Fed. Cir. 1991). By contrast, in two recent, three-
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`judge panel opinions, the court has held that claim preclusion does not bar an infringement claim
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`against a product that did not exist as of the prior judgment, “essentially the same” or not. Brain
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`Life, LLC v. Elekta Inc., 746 F.3d 1045, 1054 (Fed. Cir. 2014); Aspex Eyewear, Inc. v. Marchon
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`Eyewear, Inc., 672 F.3d 1335, 1342 (Fed. Cir. 2012). Synopsys correctly observes that the
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`Foster line of cases cannot be reconciled with Aspex and Brain Life. (Supp. Resp. [502] at 2–3.)
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`Because one three-judge panel cannot overrule another, Newell Cos., Inc. v. Kenny Mfg. Co., 864
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`F.2d 757, 765 (Fed. Cir. 1988), Foster controls until the Federal Circuit sitting en banc says
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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 3:10-cv-00954-MO Document 524 Filed 06/04/14 Page 3 of 3
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`otherwise. Mentor Graphics’s counterclaims are barred if they accuse products that are
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`“essentially the same” as those accused in the 2006 action.
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`The evidence that the parties have presented permits only one conclusion: the presently
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`and formerly accused ZeBu emulators are “essentially the same.” Mentor Graphics identifies
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`only two new features of the modern emulators: a user-friendly software tool for generating
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`“transactors” called ZEMI-3 and a device allowing multiple ZeBu units to function as a single
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`emulator called Fast Internal Bus. (Supp. Opp. [490] at 6–9.) Synopsys correctly observes that
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`neither of these features materially alters the manner in which the newer ZeBu emulators
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`allegedly practice Mentor Graphics’s patents. (Supp. Resp. [502] at 6–9.)
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`Synopsys’s Motion for Partial Summary Judgment [371] is GRANTED. Claim
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`preclusion bars Mentor Graphics’s counterclaims [382] to the extent that they allege
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`infringement of U.S. Patent Nos. 6,009,531 and 5,649,176.
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`IT IS SO ORDERED.
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`DATED this 4th day of June, 2014.
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`/s/ Michael W. Mosman
`MICHAEL W. MOSMAN
`United States District Judge
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`3 – OPINION AND ORDER