IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In re U.S. Patent No. 6,240,376
`
`Trial No.:
`
`IPR 2012-00042
`
`Atty. Dkt. No.
`
`007121.00004
`
`Application No.: 09/127,587
`Filed:
`July 31, 1998
`Issued: May 29, 2001
`
`Inventors:
`
`Alain Raynaud
`Luc M. Burgun
`
`Patent Owner: Mentor Graphics
`
`Corporation
`
`For:
`
`METHOD AND
`APPARATUS FOR
`GATE-LEVEL
`SIMULATION OF
`SYNTHESIZED
`REGISTER TRANSFER
`LEVEL DESIGNS WITH
`SOURCE-LEVEL
`DEBUGGING
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`[PROPOSED] PATENT OWNER’S REQUESTS FOR ADMISSION
`TO PETITIONER
`
`1
`
`MG 2020
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In re U.S. Patent No. 6,240,376
`
`Trial No.:
`
`IPR 2012-00042
`
`Atty. Dkt. No.
`
`007121.00004
`
`Application No.: 09/127,587
`Filed:
`July 31, 1998
`Issued: May 29, 2001
`
`Inventors:
`
`Alain Raynaud
`Luc M. Burgun
`
`Patent Owner: Mentor Graphics
`
`Corporation
`
`For:
`
`METHOD AND
`APPARATUS FOR
`GATE-LEVEL
`SIMULATION OF
`SYNTHESIZED
`REGISTER TRANSFER
`LEVEL DESIGNS WITH
`SOURCE-LEVEL
`DEBUGGING
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`[PROPOSED] PATENT OWNER’S REQUESTS FOR ADMISSION
`TO PETITIONER
`
`1
`
`MG 2020
`
`
`
`Patent Owner’s Requests for Admission to Petitioner
`
`IPR 2012-00042
`
`Pursuant to the Board’s authorization, Patent Owner Mentor Graphics Corporation
`
`(“Mentor Graphics”) hereby requests that Synopsys, Inc. (“Synopsys”) respond,
`
`separately and fully in writing and under oath, to each of the following requests for
`
`admission. Mentor Graphics requests that Synopsys deliver written responses to
`
`each of these requests for admission to the offices of Banner & Witcoff, Ltd, 1100
`
`13th Street, NW, Suite 1200, Washington, DC 20005, within fourteen (14)
`
`calendar days of the service date hereof.
`
`DEFINITIONS
`
`As used herein, the following words shall have the meanings indicated:
`
`1.
`
`“Mentor Graphics” means Patent Owner Mentor Graphics
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`Corporation, as well as its subsidiaries, divisions, affiliates, assigns, present and
`
`former officers, directors, employees, related corporations and agents.
`
`2.
`
`“Synopsys” means Synopsys, Inc. and all of its subsidiaries,
`
`divisions, affiliates, assigns, present and former officers, directors, and employees,
`
`related corporations and agents.
`
`3.
`
` “EVE” means Emulation and Verification Engineering, S.A. (now
`
`named Synopsys Emulation and Verification S.A.) and EVE-USA, Inc., and all of
`
`their subsidiaries, divisions, affiliates, assigns, present and former officers,
`
`directors, employees, related corporations and agents.
`
`4.
`
`“’376 Patent” means U.S. Patent No. 6,240,376.
`
`2
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`MG 2020
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`Patent Owner’s Requests for Admission to Petitioner
`
`IPR 2012-00042
`
`5.
`
`6.
`
`7.
`
`“Burgun” means Luc Burgun, named co-inventor of the ’376 Patent.
`
`“Privity” means the word “privity” as used in 35 U.S.C. § 315.
`
`“Real party in interest” means the word “real party interest” as used
`
`in 35 U.S.C. § 315.
`
`8.
`
` “2006 Settlement Agreement” means the Settlement Agreement and
`
`Mutual Release entered into between Mentor Graphics Corporation and Emulation
`
`and Verification Engineering, SA and EVE-USA, Inc., effective December 21,
`
`2006, including any associated agreements.
`
`9.
`
` “Communication” means every manner or method of disclosure or
`
`transfer or exchange of information, whether orally or by document, and whether
`
`face to face, by telephone, mail, email, personal delivery or otherwise. Unless
`
`otherwise indicated, a request calling for communications includes internal
`
`communications as well as communications with a third person.
`
`INSTRUCTIONS
`
`A matter is admitted unless, within 14 days after being served, Synopsys
`
`serves on Mentor Graphics, as specified above, a written answer addressed to the
`
`matter and signed by the party or its attorney. A shorter or longer time for
`
`responding may be stipulated to or be ordered by the Board.
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`If a matter is not admitted, the answer must specifically deny it or state in
`
`detail why Synopsys cannot truthfully admit or deny it. A denial must fairly
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`3
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`MG 2020
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`Patent Owner’s Requests for Admission to Petitioner
`
`IPR 2012-00042
`
`respond to the substance of the matter; and when good faith requires that Synopsys
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`qualify an answer or deny only a part of a matter, the answer must specify the part
`
`admitted and qualify or deny the rest. Synopsys may assert lack of knowledge or
`
`information as a reason for failing to admit or deny only if Synopsys states that it
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`has made reasonable inquiry and that the information it knows or can readily
`
`obtain is insufficient to enable it to admit or deny.
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`4
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`MG 2020
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`Patent Owner’s Requests for Admission to Petitioner
`
`IPR 2012-00042
`
`REQUESTS FOR ADMISSION
`
`REQUEST NO. 1:
`
`Admit EVE is a wholly-owned subsidiary of Synopsys.
`
`REQUEST NO. 2:
`
`Admit that Synopsys and EVE are in privity with respect to the subject
`
`matter and outcome of the litigation resulting in the 2006 Settlement Agreement, as
`
`of the date of filing the 2006 complaint that initiated said litigation.
`
`REQUEST NO. 3:
`
`Admit that Synopsys and EVE are in privity with respect to the subject
`
`matter and outcome of the litigation resulting in the 2006 Settlement Agreement, as
`
`of September 26, 2012.
`
`REQUEST NO. 4:
`
`Admit that Synopsys and EVE are in privity with respect to the subject
`
`matter and outcome of the litigation resulting in the 2006 Settlement Agreement, as
`
`of September 27, 2012.
`
`REQUEST NO. 5:
`
`Admit that Synopsys and EVE are in privity with respect to the subject
`
`matter and outcome of the litigation resulting in the 2006 Settlement Agreement, as
`
`of October 4, 2012.
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`5
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`MG 2020
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`Patent Owner’s Requests for Admission to Petitioner
`
`IPR 2012-00042
`
`REQUEST NO. 6:
`
`Admit that Synopsys and EVE are in privity with respect to the subject
`
`matter and outcome of the litigation resulting in the 2006 Settlement Agreement, as
`
`of February 22, 2013, the date of institution of the instant IPR.
`
`REQUEST NO. 7:
`
`Admit that Synopsys and EVE are in privity with respect to the subject
`
`matter and outcome of the litigation resulting in the 2006 Settlement Agreement, as
`
`of March 29, 2013.
`
`REQUEST NO. 8:
`
`Admit that EVE was a real party in interest to the instant IPR as of
`
`September 26, 2013.
`
`REQUEST NO. 9:
`
`Admit that EVE was a real party in interest to the instant IPR as of
`
`September 27, 2013.
`
`REQUEST NO. 10:
`
`Admit that EVE was a real party in interest to the instant IPR as of February
`
`22, 2013.
`
`REQUEST NO. 11:
`
`Admit that EVE is currently a real party in interest to the instant IPR.
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`6
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`MG 2020
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`Patent Owner’s Requests for Admission to Petitioner
`
`IPR 2012-00042
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`REQUEST NO. 12:
`
`Admit that Synopsys prepared and filed the petition to institute the inter
`
`partes review of the ’376 Patent at least partially in reliance on, or anticipation of,
`
`Synopsys acquiring EVE.
`
`REQUEST NO. 13:
`
`Admit that at least one attorney, agent, officer, or employee of EVE
`
`provided assistance, input, or materials that were used in preparing the petition for
`
`inter partes review of the ’376 Patent.
`
`REQUEST NO. 14:
`
`Admit that at least one attorney, agent, officer, or employee of EVE
`
`provided assistance, input, or materials that were used in preparing the petition for
`
`inter partes review of the ’376 Patent at a time when the attorney, agent, officer, or
`
`employee of EVE had knowledge that Synopsys intended to file a petition for inter
`
`partes review of the ’376 Patent.
`
`REQUEST NO. 15:
`
`Admit that, on or before September 26, 2012, EVE and Synopsys discussed
`
`coordination of the preparation and/or filing of a petition for inter partes review of
`
`the ’376 Patent with the preparation and/or filing of the September 27, 2012
`
`Complaint (MG 2004) initiating a declaratory judgment action.
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`7
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`MG 2020
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`Patent Owner’s Requests for Admission to Petitioner
`
`IPR 2012-00042
`
`REQUEST NO. 16:
`
`Admit that the grounds stated in the petition for inter partes review of the
`
`‘376 patent at least partially formed the Rule 11 basis for filing the September 27,
`
`2012 Complaint initiating a declaratory judgment action.
`
`REQUEST NO. 17:
`
`Admit that, on or before September 26, 2012, EVE and Synopsys discussed
`
`coordination of the preparation and filing of a petition for inter partes review of
`
`the ’376 Patent with the preparation and execution of the agreement by which
`
`Synopsys acquired Eve.
`
`REQUEST NO. 18:
`
`Admit that Synopsys acquired EVE at least in part to continue the
`
`development, marketing, and sale of one or more products of the “ZeBu” line of
`
`emulation products.
`
`REQUEST NO. 19:
`
`Admit that Synopsys acquired EVE at least in part to benefit from Burgun’s
`
`technical and/or business expertise with respect to the ZeBu line of emulation
`
`products.
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`8
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`MG 2020
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`Patent Owner’s Requests for Admission to Petitioner
`
`IPR 2012-00042
`
`REQUEST NO. 20:
`
`Admit that Synopsys and EVE executed a ‘letter of intent’ or other pre-
`
`acquisition document outlining the initial terms of Synopsys’ acquisition of EVE
`
`on or prior to September 26, 2012.
`
`REQUEST NO. 21:
`
`Admit that Synopsys and EVE had executed one or more agreements
`
`concerning Synopsys’ purchase of EVE on or prior to September 26, 2012.
`
`REQUEST NO. 22:
`
`Admit that Synopsys intended the petition for inter partes review to be filed
`
`before Synopsys and EVE entered into the September 27, 2012, agreement for
`
`Synopsys to acquire EVE.
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`9
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`MG 2020
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`Patent Owner’s Requests for Admission to Petitioner
`
`IPR 2012-00042
`
`REQUEST NO. 23:
`
`Admit that Synopsys intended the petition for inter partes review to be filed
`
`before Synopsys and EVE jointly filed the September 27, 2012 Complaint
`
`initiating a declaratory judgment action.
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`Dated: March 29, 2013
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`Respectfully submitted,
`
`
`By:
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`10
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`MG 2020
`
`
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