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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Inventors:
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`For:
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`In re U.S. Patent No. 6,240,376
`Application No.:
`09/127,587
` Filed:
`July 31, 1998
` Issued:
`May 29, 2001
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`Alain Raynaud
`Luc M. Burgun
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`Patent Owner: Mentor Graphics
`Corporation
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`METHOD AND
`APPARATUS FOR GATE-
`LEVEL SIMULATION OF
`SYNTHESIZED
`REGISTER TRANSFER
`LEVEL DESIGNS WITH
`SOURCE-LEVEL
`DEBUGGING
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`Trial No.:
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`IPR 2012-00042
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`Atty. Dkt. No.
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`007121.00004
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`PATENT OWNER’S LISTING OF ANTICIPATED MOTIONS FOR
`DISCUSSION IN INITIAL CONFERENCE CALL
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`An initial conference call is scheduled in this matter for Thursday, March
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`21, 2013 at 2:00pm EDST. Pursuant to the Office Patent Trial Practice Guide
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`(OPTPG), Fed. Reg., Vol.77, No. 157 (August 14, 2012) at 48765, the Patent
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`Owner submits this initial listing of motions it may bring during this trial. This
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`listing is without prejudice to Patent Owner’s right to seek authorization to bring
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`additional motions, or to decide not to bring motions as indicated, as circumstances
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`may warrant.
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`1. Motion to Take Discovery Relating Petitioner Synopsys’
`Lack of Standing in this IPR Under 35 U.S.C. § 315(b)
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`Patent Owner filed on March 8, 2013 a Request for Rehearing on the
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`Board’s decision to institute the instant inter partes review (IPR). That request is
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`currently pending. Contingent on the Board’s decision on the Request for
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`Rehearing, or in the event the Board desires additional information or evidence
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`pertaining to the pending Request for Rehearing, the Patent Owner may move to
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`take additional discovery1 of Petitioner Synopsys regarding:
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`1 This includes, potentially, a reasonable number of requests for production,
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`interrogatories, requests for admission and depositions of persons knowledgeable
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`of the relevant facts.
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`2
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` Synopsys’ privity relationship with EVE2, including:
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` Synopsys’ acquisition of EVE consummated on or about October 4, 2012
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`and activities leading up to that acquisition, including but not limited to the
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`acquisition agreement entered into by Synopsys and EVE on September 27,
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`2012, and joint business activities leading up to and relating to that
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`agreement, including the business of “using, importing, selling, offering for
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`sale and/or supporting the ZeBu Products in the United States, which line of
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`products was previously accused by Mentor Graphics [in 2006] of infringing
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`the . . . [‘376 patent] and which products share structures and functionality
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`that Mentor Graphics alleged are relevant to the claims of the . . . [‘376
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`patent].” Preliminary Response at 6 (quoting the September 27, 2012
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`Declaratory Judgment Complaint (MG 2004) filed jointly by EVE and
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`Synopsys, at ¶13).
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` The relationship of Synopsys and EVE in and around the time in 2006 when
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`Patent Owner Mentor Graphics served on EVE a complaint alleging
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`infringement of the `376 patent.
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`2 EVE-USA, Inc. and Emulation and Verification Engineering, S.A., the
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`defendants served by Patent Owner with a complaint alleging infringement of the
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`subject `376 patent in 2006 (as referenced in the Request for Rehearing) will be
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`referred to together as “EVE.”
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`3
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` Evidence of when Petitioner Synopsys actually served a copy of the Petition
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`in the instant IPR on Patent Owner’s counsel of record Banner &Witcoff,
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`Ltd. at its correct address of record with the USPTO, including any correct
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`Certificate of Service.
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` The role of EVE as a real party-in-interest to the Petition filed by Synopsys in
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`the present IPR, including but not limited to:
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` EVE’s or its counsel’s involvement in preparing the Petition and/or the
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`grounds asserted therein, pursuing this IPR, and/or paying of costs, including
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`attorney and filing fees, associated with the foregoing;
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` The relationship of (1) the work undertaken by co-plaintiffs EVE and
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`Synopsys, and their counsel (including Orrick, Herrington & Sutcliff, LLP),
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`in connection with filing and litigating the Declaratory Judgment Action
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`initiated by the September 27, 2012 Complaint (MG 2004) filed jointly by
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`EVE and Synopsys, to (2) the work undertaken by Petitioner Synopsys and
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`its counsel (including again Orrick, Herrington &Sutcliff, LLP) in preparing
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`and filing the Petition in the instant IPR.
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`2. Motion to Take Discovery Relating to Assignor Estoppel
`Barring EVE, and Hence its Privy Petitioner Synopsys, from
`Challenging the Validity of the `376 Patent in this IPR
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`Assignor estoppel arises by virtue of named inventor of the `376 patent, Luc
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`M. Burgun, assigning his rights in the `376 patent to Patent Owner Mentor
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`4
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`Graphics and subsequently founding EVE as its co-founder. Up to the time that
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`Synopsys acquired EVE, Mr. Burgun led EVE, serving as President, Chief
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`Executive Officer, and shareholder, and was intimately involved in EVE’s efforts
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`to offer emulation services and products. EVE, now under Synopsys’ control as a
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`wholly owned subsidiary, continues to manufacture the products Burgun helped
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`design and develop under the Synopsys brand. In his current role as Synopsys’
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`Vice President of Emulation, Mr. Burgun continues to direct the design and
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`development of these products.
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`Contingent on the Board’s decision on the pending Request for Rehearing,
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`the Patent Owner may move to take additional discovery3 of Petitioner Synopsys
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`(including its wholly owned subsidiary EVE) regarding facts relevant to the
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`applicability of assignor estoppel as a bar to the instant IPR, including facts
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`relating to Burgun’s current roles with Synopsys and his previous roles with EVE.
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`3. Motion to Amend the Claims
`Patent Owner has no present intention to move to amend the claims, but its
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`study of the Board’s Decision granting a trial in this matter is ongoing. In the
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`event the Board denies the pending Request for Rehearing of the decision granting
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`a trial, Patent Owner may choose to move to amend one or more of the claims for
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`which a trial has been granted, at the time of filing its Patent Owner’s Response as
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`3 See n. 1, supra.
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`5
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`permitted under 37 C.F.R. § 42.121. In such an event, Patent Owner intends to
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`request another conference call with the Board to confer regarding the same.
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`Dated: March 19, 2013
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`Respectfully submitted,
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`By:
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` /Christopher L. McKee/
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`Christopher L. McKee
`Registration No. 32,384
`Michael S. Cuviello
`Registration No. 59,255
`Banner & Witcoff, Ltd
`1100 13th Street, NW
`Suite 1200
`Washington, DC 20005
`Tel: (202) 824-3000
`Fax: (202) 824-3001
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`Attorneys for Patent Owner
`Mentor Graphics Corporation
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`6
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service on the Petitioner, pursuant to 37 C.F.R. §
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`42.6(e), by FedEx Standard Overnight delivery of a true copy of the foregoing
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`PATENT OWNER’S LISTING OF ANTICIPATED MOTIONS FOR
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`DISCUSSION IN INITIAL CONFERENCE CALL to lead counsel of record for
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`Petitioner as follows:
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`William H. Wright, Esq.
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`777 South Figueroa Street
`Suite 3200
`Los Angeles, CA 90017
`Tel: (213) 629-2020
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`/Christopher L. McKee/
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`Dated: March 19, 2013
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`By: _______________________
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`Christopher L. McKee
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