`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 24
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` Entered: 25 April 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SYNOPSYS, INC.
`Petitioner
`
`v.
`
`MENTOR GRAPHICS CORPORATION
`Patent Owner
`_______________
`
`Case IPR2012-00042 (SCM)
`Patent 6,240,376 B1
`_______________
`
`
`Before SALLY C. MEDLEY, HOWARD B. BLANKENSHIP, and
`JENNIFER S. BISK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Motion for Additional Discovery
` 37 C.F.R. § 42.51
`
`INTRODUCTION
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`Patent Owner, Mentor Graphics Corporation (Mentor Graphics), filed
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`a motion for additional discovery. Paper 21 (“Motion”). Petitioner
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`
`
`
`
`
`
`
`
`Case IPR2012-00042
`Patent 6,240,376 B1
`
`Synopsis, Inc. (“Synopsis) filed an opposition. Paper 22 (“Opposition”).
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`The motion is denied.
`
`BACKGROUND
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`Mentor Graphics seeks additional discovery relating to (1) “the legal
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`standard adopted by the Board” regarding 35 U.S.C. § 315(b) (Motion 3);
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`and (2) assignor estoppel.1 Motion 3-4. Specifically, Mentor Graphics
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`seeks:
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`(1) fifteen requests for the production of documents, whereby
`each of the fifteen requests seeks discovery of multiple
`documents (Ex. 2018);2
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`(2) ten interrogatories (Ex. 2019);
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`(3) twenty-three requests for admissions (Ex. 2020); and
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`(4) deposition of a “person or persons” with sufficient
`knowledge to testify on behalf of Synopsys; whereby Mentor
`Graphics seeks to depose the person or persons on six
`deposition topics. (Ex. 2021).
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`
`
`
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`1 The parties disagree that a party may raise assignor estoppel as a defense in
`an inter partes review. Motion 5-9 and Opposition 7-10. Solely for
`purposes of deciding Mentor Graphics’ motion for discovery, we assume
`that the issue of assignor estoppel may be raised in an inter partes review.
`The decision does not, otherwise decide, whether assignor estoppel may be
`raised as a defense in an inter partes review.
`
` 2
`
` For example, Request No. 2 includes “Copies of any memoranda of
`understanding, commitment letters, letters of intent, or similar documents
`prepared or sent by EVE or Synopsys in connection with, or in
`contemplation of, the executed merger or acquisition agreement(s) referred
`to in REQUEST NO. 1.” Ex. 2018 at 4.
`
`
`
`
`2
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`
`
`Case IPR2012-00042
`Patent 6,240,376 B1
`
`
`
`ANALYSIS
`
`Motions
`
`A motion must include a statement of the precise relief requested. 37
`
`CFR § 42.22. A party cannot be granted relief when the relief requested is
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`not clearly articulated or is not meaningful in the first instance. Mentor
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`Graphics motion is not well articulated. Mentor Graphics explains that its
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`request for discovery in relation to 35 U.S.C. § 315(b) is to “allow the Patent
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`Owner an opportunity to show the applicability of a § 315(b) bar under the
`
`legal standard adopted by the Board.” Motion 3. The legal standard adopted
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`by the Board is that § 315(b) requires a privity relationship “in 2006 when
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`EVE was served with a complaint alleging infringement of the ’376 patent.”
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`Decision – Institution of Inter Partes Review; Paper 16 at 15-16;
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`“Decision;” Rehearing Req. 14. Yet, Mentor Graphics seeks discovery of
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`such things as the effective filing date of the petition and the status of EVE
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`as a real party-in-interest to the inter partes review. Motion 3. However,
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`the production of such things has not been shown to be relevant to “the
`
`§ 315(b) bar under the legal standard adopted by the Board.”
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`The section regarding the request for discovery for the assignor
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`estoppel issue is also not clear. Missing from that section is an explanation
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`of why the requested discovery would be necessary in the interest of justice.
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`Instead, that section of the motion explains why assignor estoppel can be
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`raised as a defense in an inter partes review. Motion 5-9. In that regard,
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`Mentor Graphics argues that the requests for additional discovery will
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`provide an opportunity for it to fully develop and present facts so the Board
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`may consider the applicability of assignor estoppel as a bar. Motion 6.
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`
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`3
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`Case IPR2012-00042
`Patent 6,240,376 B1
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`However, Mentor Graphics must demonstrate that the requests are in the
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`interest of justice by showing first the relevance to the issue it seeks to raise.
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`See, e.g., IPR2013-00026, Paper 32 at 5. That, Mentor Graphics has failed
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`to do. Since Mentor Graphics has failed to clearly and consistently articulate
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`why it needs the discovery in the first instance, the Board cannot grant the
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`request.
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`Additionally, and for the following reasons, we have considered each
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`item of Mentor Graphics’ discovery request (see, e.g., Exhibits 2018-2021)
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`and conclude that Mentor Graphics’ motion has not shown that any of the
`
`items it requests are necessary in the interest of justice. Accordingly, the
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`discovery request is denied.
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`Necessary in the interest of justice
`
`Under the Leahy-Smith America Invents Act, discovery is available
`
`for the deposition of witnesses submitting affidavits or declarations and for
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`“what is otherwise necessary in the interest of justice.” 35 U.S.C.
`
`§ 316(a)(5); see also 37 C.F.R. § 42.51(b)(2)(“The moving party must show
`
`that such additional discovery is in the interest of justice ….”). Clear from
`
`the legislative history is the idea that discovery should be limited; and that
`
`the PTO should be conservative in its grant of additional discovery in order
`
`to meet time imposed deadlines. 154 Cong. Rec. S9988-89 (daily ed.
`
`Sept. 27, 2008) (statement of Sen. Kyl).
`
`One factor in determining whether additional discovery is in the
`
`interest of justice is whether there exists more than a “mere possibility” or
`
`“mere allegation that something useful [to the proceeding] will be found.”
`
`See Order – Authorizing Motion for Additional Discovery, IPR2012-00001,
`
`Paper 20 at 2-3 (explaining several factors to consider in determining
`
`
`
`4
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`
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`Case IPR2012-00042
`Patent 6,240,376 B1
`
`whether additional discovery meets the “necessary in the interest of justice”
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`standard).3 In other words, the “party requesting discovery should already
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`be in possession of evidence tending to show beyond speculation that in fact
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`something useful will be uncovered.” Id.
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`Here, Mentor Graphics does not provide an explanation with evidence
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`sufficient to show that in fact something useful will be uncovered if
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`discovery is authorized. The section of the motion regarding the § 315(b)
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`issue is brief and merely lists the discovery Mentor Graphics seeks.
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`Motion 3. The “Category 2: Assignor Estoppel” section of the motion is
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`also devoid of an explanation with evidence sufficient to show that in fact
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`something useful will be uncovered if discovery is authorized. Motion 5-9.
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`As an example, Mentor Graphics seeks “copies of any memoranda of
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`understanding, commitment letters, letters of intent, or similar documents
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`prepared or sent by EVE or Synopsys in 2006 or earlier in connection with,
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`or in contemplation of, an executed merger or acquisition by Synopsys of
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`EVE.” (Ex. 2018; Request No. 13). Mentor Graphics has not directed us to
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`evidence that would tend to show, for example, that in 2006 EVE had any
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`relationship with Synopsis at all. Indeed, all along in this proceeding,
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`Mentor Graphics has advanced a position that Synopsys and EVE were in
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`privity sometime in 2012; never in 2006. Decision 16; also see Prelim.
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`Resp. 2 (“EVE and Synopsys were separate companies until the autumn of
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`2012.”); Prelim. Resp. 7-8 (“In 2006, EVE was the sole owner of all rights
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`in the ZeBu line of products. Any interest Synopsys holds today is derived
`
`
`3 During a conference call held on March 21, 2013, discussion was had with
`respect to the “necessary in the interest of justice” standard and decisions in
`other inter partes proceedings that provide guidance for this standard. See,
`e.g., Ex. 1011 at 15-16.
`
`
`
`5
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`Case IPR2012-00042
`Patent 6,240,376 B1
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`from its acquisition of EVE.”).
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`Another factor to consider is whether a request for additional
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`discovery shows what efforts the moving party made to acquire, on its own,
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`any of the requested discovery it now seeks. See, e.g., IPR2012-00001,
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`“factor 3.” Based on the record before us, we do not know what efforts
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`Mentor Graphics made to acquire any of the items it seeks to retrieve from
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`Synopsis. For example, Mentor Graphics requests “[c]ommunications4
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`before October 4, 2012, regarding or relating to Burgun’s role at Synopsys.”
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`Ex. 2018; Request No. 7. Mentor Graphics has not explained adequately
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`why it needs any and all communications “regarding or relating” to
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`Burgun’s role at Synopsis prior to October 4, 2012. We do not know, for
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`example, why Mentor Graphics would need potentially publicly available
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`information that Mentor Graphics could obtain through other means, such as
`
`press releases, etc.
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`Still another factor to consider is whether the requests for discovery
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`are overly burdensome to answer, given the expedited nature of the inter
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`partes review. That burden includes financial burden, burden on human
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`resources and burden on meeting the time schedule. See, e.g., IPR2012-
`
`00001, “factor 5.” Mentor Graphics’ requests are overly burdensome and
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`would require a significant expenditure of time, along with human and
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`financial resources. For example document request no. 7, requests
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`“[c]ommunications before October 4, 2012, regarding or relating to
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`Burgun’s role at Synopsys.” Ex. 20185; Request No. 7. The request is
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`broad. Synopsis indicates that such a request would be overly burdensome,
`
`
`4 Mentor Graphics defines “communication” to include communications
`with an external source (someone outside of the Synopsys organization),
`such as a member of the public. Ex. 2018 at 3.
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`
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`6
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`Case IPR2012-00042
`Patent 6,240,376 B1
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`forcing it to chase down a large volume of documents that reside in the
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`records of three different companies in two countries. Opposition 11. We
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`agree with Synopsis that such a request would be overly burdensome.
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`Indeed, Mentor Graphics has not shown that it tailored narrowly any of its
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`requests or tried to diminish the burden to Synopsis with respect to any of its
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`requests in any way.
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`CONCLUSION
`
`For the reasons discussed above, we conclude that Mentor Graphics’
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`motion has not shown that any of the items it requests (Exhibits 2018-2021)
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`are necessary in the interest of justice.
`
`ORDER
`
`It is
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`ORDERED that Mentor Graphics’ motion for additional discovery is
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`denied.
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`7
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`
`
`Case IPR2012-00042
`Patent 6,240,376 B1
`
`PETITIONER:
`
`William H. Wright
`Travis Jensen
`Orrick, Herrington & Sutcliffe, LLP
`Email: wwright@orrick.com
`Email: tjensen@orrick.com
`
`PATENT OWNER:
`
`Christopher L. McKee
`Michael S. Cuviello
`Banner & Witcoff, Ltd.
`Email: mentoripr@bannerwitcoff.com
`
`
`
`
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`8
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`
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