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