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`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 23
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` Entered: April 11, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`SYNOPSYS, INC.
`Petitioner
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`v.
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`MENTOR GRAPHICS CORPORATION
`Patent Owner
`_______________
`
`Case IPR2012-00042
`Patent 6,240,376 B1
`_______________
`
`
`Before SALLY C. MEDLEY, HOWARD B. BLANKENSHIP, and JENNIFER
`S. BISK, Administrative Patent Judges.
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`BISK, Administrative Patent Judge.
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`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
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`Case IPR2012-00042
`Patent 6,240,376 B1
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`
`SUMMARY
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`Patent Owner, Mentor Graphics Corporation requests rehearing of the Board‟s
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`decision to institute an inter partes review of U.S. Patent 6,240,376 B1 (Ex. 1001)
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`(the “‟376 patent”) (Paper 16 (“Decision”)) entered February 22, 2013. Paper 18
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`(“Rehearing Req.”).1 For the reasons that follow, Patent Owner‟s request for
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`rehearing is denied.
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`DISCUSSION
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`The applicable standard for a request for rehearing is set forth in 37 C.F.R.
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`§ 42.71(d), which provides in relevant part:
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`A party dissatisfied with a decision may file a request for rehearing, without
`prior authorization from the Board. The burden of showing a decision should
`be modified lies with the party challenging the decision. The request must
`specifically identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously addressed in a
`motion, opposition, or a reply.
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`Patent Owner argues that the Decision misapprehends: (1) the statutory nature
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`of an alleged error in service of the petition in this case; and (2) the privity
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`requirement of § 315(b). Rehearing Req. 1-2. The arguments are unpersuasive.
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`Filing Date of the Petition
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`Patent Owner argues that we overlooked and misapprehended that “[i]n its
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`1 A request for rehearing of a decision under 37 C.F.R. § 42.71(d) must be filed in
`the form of a motion, which is limited to 15 pages (see 37 C.F.R. § 42.24(a)(v)).
`Patent Owner‟s request is 27 pages. In the future, a request of this length may be
`found defective.
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`2
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`Case IPR2012-00042
`Patent 6,240,376 B1
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`Preliminary Response, Mentor Graphics argued that September 26, 2012 was not the
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`filing date of the petition because Synopsys did not properly serve the petition on
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`that date.” Rehearing Req. 20. In fact, Patent Owner‟s argument in the Preliminary
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`Response (Paper 15 (“Prelim. Resp.”)) consisted of the following three sentences in
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`a footnote:
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`On September 27, 2012, Synopsys served the petition on the „376 Patent‟s
`PTO correspondence address of record, making September 27, 2012, the
`effective filing date pursuant to 37 C.F.R. §§ 42.105(a) and 42.106, rather
`than the September 26, 2012 filing date accorded to the Petition by the PTAB.
`Receipt of the Petition at the correspondence address of record is shown by
`Banner & Witcoff‟s “Messenger Log” (MG 2005) (See 5th entry dated
`September 27, 2012, indicating “Mentor Graphics.”) The petition is dated
`September 26, 2012, the date Synopsys unsuccessfully attempted to serve the
`petition by hand on an incorrect address.
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`Prelim. Resp. 4, n.2.
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`In its Rehearing Request, Patent Owner argues, for the first time, that proper
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`service is a statutory requirement. Rehearing Req. 20-23. We could not have
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`overlooked or misapprehended this argument because it was not made in the
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`preliminary response. Thus, on that basis alone, we are not persuaded by the
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`argument. Moreover, we do not find persuasive Patent Owner‟s arguments on the
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`merits. The requirement of 35 U.S.C. § 312(a) that Patent Owner relies on states
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`that “[a] petition filed under section 311 may be considered only if— . . . (5) the
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`petitioner provides copies of any of the documents required under paragraphs (2),
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`(3), and (4) to the patent owner, or, if applicable, the designated representative of
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`the patent owner.” There is no dispute that Petitioner provided copies of the
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`required documents to the patent owner‟s representative. See Prelim. Resp. 4, n.2;
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`3
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`Case IPR2012-00042
`Patent 6,240,376 B1
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`Rehearing Req. 20-23. Nothing in the statute states that the date the Patent Owner
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`receives those copies is determinative of the filing date. We, therefore, are not
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`persuaded by Patent Owner‟s arguments.
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`As for our rules, § 42.105 requires petitioner to “serve the petition and
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`exhibits . . . on the patent owner at the correspondence address of record for the
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`subject patent” and § 42.106 states that “[a] petition to institute inter partes review
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`will not be accorded a filing date until the petition . . . [e]ffects service of the
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`petition on the correspondence address of record as provided in [§] 42.105(a).” We
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`are persuaded that Petitioner made a good faith attempt to serve, on September 26,
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`2012, the petition in compliance with our rules. The address found on the certificate
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`of service (e.g., Petition at 61), a prior address of the Patent Owner‟s representative
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`law firm, can be found in the most recent assignment document in the Office‟s
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`assignment database. See Reel/Frame 016547/09790 (recorded Sept. 20, 2005).
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`Based on the facts of this case, we are not persuaded that the accorded filing date is
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`erroneous.
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`35 U.S.C. § 315(b)
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`Patent Owner argues that the Board applied the wrong test in determining
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`whether the Petition in this case is barred by § 315(b). Rehearing Req. 2-3.
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`According to the Patent Owner, because Petitioner is a successor-in-interest of the
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`allegedly infringing products of EVE, party to the 2006 litigation, Petitioner is
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`barred by § 315(b) from filing the Petition. Rehearing Req. 14-16. According to
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`Patent Owner, because here the issue involves successor-in-interest privity, § 315(b)
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`does not require that the privity relationship existed at the time the 2006 complaint
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`4
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`Case IPR2012-00042
`Patent 6,240,376 B1
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`was served (id. at 14-16) or even on the date that the petition was filed (id. at 16-
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`19). Patent Owner bases its entire argument on the premise that the “property in
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`question” for purposes of privity in this context “necessarily encompasses the
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`property at issue in the action initiated by the complaint alleging infringement.”
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`Rehearing Req. 8. According to Patent Owner, the “property in question” is only
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`confined to the patent sought to be reviewed for purposes of privity in the context of
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`§ 315(e) estoppel issues. Id. at n.4.
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`However, Patent Owner does not cite to any persuasive authority that supports
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`its argument. See id. The cases discussed by Patent Owner all involve successive
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`infringement suits where both cases involve the same allegedly infringing products.
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`For example, Brunswick involves two patent infringement actions related to the same
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`alleging infringing products. Bruswick Corp. v. Chrysler Corp., 408 F.2d 335, 336
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`(7th Cir. 1969). The first infringement action resulted in a consent decree, after
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`which the alleged infringer was acquired by another company. Id. The Court held
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`that for purposes of the second suit, the acquiring company was in privity with the
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`previous defendant because that company “succeeded in interest to the subject matter
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`of the prior decree.” Id. at 338 (emphasis added). That is not the case here.
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`Patent Owner also refers to legislative history and the Office Patent Trial
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`Practice Guide as supporting its position. Rehearing Req. 6-7 (citing 154 Cong. Rec.
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`S9987 (daily ed. Sept. 27, 2008); Fed. Reg., Vol. 77 No. 157 (Aug. 14, 2012) at
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`48759). However, nothing in those passages states that a statutory bar under
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`§ 315(b) is bestowed automatically upon a company that acquires products accused
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`of infringement. In fact, the Patent Owner does not even rely on direct language
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`5
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`Case IPR2012-00042
`Patent 6,240,376 B1
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`from the legislative history, but relies on the discussion of privity and res judicata in
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`“case law referenced” by that history. Rehearing Req. 7. In fact, the referenced case
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`that Patent Owner quotes, Horphag, holds that the successor-in-interest of property
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`was not barred by res judicata. Int’l Nutrition Co. v. Horphag Research, Ltd., 220
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`F.3d 1325 (Fed. Cir. 2000).
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`For the first time in its Request for Rehearing, Patent Owner argues that EVE
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`is a real-party-in-interest to the Petition. Rehearing Req. 25-27; see Prelim. Resp. 6-
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`7, n.6 (“Since Synopsys and EVE share a common interest, EVE may be a real
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`party in interest in this inter partes review. But because EVE and Synopsys are
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`clearly in privity, the Board need not reach the question of whether EVE is a real
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`party in interest.”) (emphasis added). A request for rehearing is not an opportunity
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`to supplement the preliminary response. We could not have misapprehended or
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`overlooked an argument not adequately explained in the briefing. Similarly, we
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`could not have misapprehended or overlooked evidence that was not part of the
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`record at the time of the Decision. See Rehearing Req. 13 (referring to evidence
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`from concurrent district court proceedings that was created after both the petition
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`and the preliminary response were filed). Thus, we are not persuaded by Patent
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`Owner‟s reference to evidence that was not submitted to the Board or did not exist at
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`the time of the preliminary response. See, e.g. Rehearing Req. 13.
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`CONCLUSION
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`For the foregoing reasons, Patent Owner‟s request for rehearing is granted to
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`the extent that we have reconsidered our decision in light of Patent Owner‟s request
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`and otherwise denied because we see no basis to change that decision.
`6
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`Case IPR2012-00042
`Patent 6,240,376 B1
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`
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`PETITIONER:
`
`William H. Wright
`Travis Jensen
`Orrick, Herrington & Sutcliffe, LLP
`Email: wwright@orrick.com
`Email: tjensen@orrick.com
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`PATENT OWNER:
`
`Christopher L. McKee
`Michael S. Cuviello
`Banner & Witcoff, Ltd.
`Email: mentoripr@bannerwitcoff.com
`
`alw
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`7
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