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