`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 27
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`Entered: June 21,2013
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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 HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`JENNIFER S. BISK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
`On June 19, 2013, the following individuals participated in a
`conference call:
`(1) Mr. William Wright and Mr. Travis Jensen, counsel for Synopsys,
`Inc. (Synopsys);
`
`
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`Case IPR2012-00042
`Patent 6,240,376 B1
`
`
`(2) Mr. Christopher McKee and Mr. Michael Cuviello, counsel for
`Mentor Graphics Corporation (Mentor Graphics); and
`(3) Howard Blankenship, Sally Medley, and Jennifer Bisk,
`Administrative Patent Judges.
`The purpose of the call was for Mentor Graphics to seek: (1) a one
`week extension of DUE DATE 1; (2) authorization to file a motion to
`dismiss the proceeding based on assignor estoppel; (3) authorization to file a
`motion to dismiss the proceeding based on EVE being a real party-in-
`interest; (4) authorization to file a motion to dismiss the proceeding based on
`Synopsys and Eve being in privity under 35 U.S.C. § 315(b); (5)
`authorization to file a motion for additional discovery on issue 3; (6)
`authorization to file a motion for additional discovery on issue 4; and (7)
`guidance on a motion to amend.
`
`
`Extension of time
`
`As set forth per the Scheduling Order entered February 22, 2013, the
`parties may stipulate to different dates for DUE DATES 1 through 3 (earlier
`or later, but not later than DUE DATE 4). The parties may not stipulate to
`an extension of DUE DATES 4-7.
`In early May, 2013, the parties, at the request of Mentor Graphics,
`agreed to a one month extension for DUE DATES 1-3. Paper 26. Mentor
`Graphics seeks yet another extension of DUE DATE 1; this time for a one
`week extension beyond the already extended due date. Unlike the first time,
`no agreement could be made. As explained during the call, counsel for
`Synopsys opposes the one week extension because the schedule has already
`
`
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`2
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`Case IPR2012-00042
`Patent 6,240,376 B1
`
`been compressed by a month leaving a shorter time for Synopsys to respond
`to any papers filed by Mentor Graphics.
`When the parties cannot agree to an extension of time between
`themselves, the Board will not normally change the times without a showing
`of good cause by the party requesting the extension of time. 37 C.F.R. §
`42.5(c)(2). This requirement is consistent with the requirements of 35
`U.S.C. § 316(a)(11) which provides that the Board issue a final decision not
`less than one year after institution of the review.
`During the conference call, it became clear that counsel for Mentor
`Graphics seeks postponement of this proceeding pending a decision in two
`other cases.1
`As explained during the call, the Board is of the opinion that the
`instant proceeding can proceed at the same time as the other two pending
`cases and counsel for Mentor Graphics provided no reason to the contrary.
`Moreover, Mentor Graphics has had ample notice of the challenges to the
`6,240,376 patent from the time the petition was filed nearly nine months
`ago. The issues for trial have been streamlined and simplified even further
`and Mentor Graphics has had nearly four months from the notification of
`institution of the trial to formulate its response.
`Since counsel for Mentor Graphics did not present an adequate factual
`basis to support a good cause showing for extending Due Date 1, the request
`for an extension of DUE DATE 1 was denied.
`
`
`1 Synopsis, Inc., EVE-USA, Inc. and Emulation and Verification Engineering
`S.A. v. Mentor Graphics Corp., 3:12-cv-05025-LB (N.D. Cal., filed
`September 27, 2013). See Paper 11 at 2. Mentor Graphics Corporation v.
`Teresa Stanek Rea, 1:13-cv-518 (E.D. Va., filed April 29, 2013). See Paper
`26.
`
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`3
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`Case IPR2012-00042
`Patent 6,240,376 B1
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`
`
`Mentor Graphics’ Request to file motions to dismiss this proceeding
`
`Counsel for Mentor Graphics requested leave to file three substantive
`motions to dismiss the instant proceeding. Specifically, Mentor Graphics
`seeks authorization to file (1) a motion to dismiss the proceeding based on
`assignor estoppel; (2) a motion to dismiss the proceeding based on EVE
`being a real party-in-interest; and (3) a motion to dismiss the proceeding
`based on Synopsys and Eve being in privity under 35 U.S.C. § 315(b).2 In
`connection with issue 1 directly above, Mentor Graphics further requests an
`extension of the 15 page limit for the motion.
`During the conference call, counsel for Mentor Graphics explained
`that it was his understanding that the patent owner response is limited per
`rule 37 C.F.R. § 42.120. That rule provides that a patent owner may file a
`response to the petition addressing any ground for unpatentability not
`already denied. The Board does not read the rule as precluding a patent
`owner response from including issues of standing. As explained, the issues
`Mentor Graphics seeks to raise per individual motions can all be addressed
`in its patent owner response. Counsel for Mentor Graphics did not contend
`otherwise. Accordingly, the Board denied Mentor Graphics’ request to file
`the three separate motions.
`Counsel for Mentor Graphics indicated that he may need additional
`pages beyond the 60 page limit for the patent owner response. However, no
`indication was made that Mentor Graphics currently has a draft patent owner
`
`2 Mentor Graphics has, on several occasions, raised these same issues and
`the Board has ruled on some of the issues. See, Papers 15, 16, 18, 19, 23 and
`24.
`
`
`
`4
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`Case IPR2012-00042
`Patent 6,240,376 B1
`
`response that will exceed the 60 page limit. Thus, no extension of the 60
`page limit was granted.
`
`
`Motions for additional discovery
`
`Mentor Graphics seeks authorization to file two separate motions for
`additional discovery. Specifically, Mentor Graphics seeks authorization to
`file a motion for additional discovery on the basis that Synopsys and Eve are
`in privity for purposes of 35 U.S.C. § 315(b), and a separate motion for
`additional discovery on the basis that Eve is a real party-in-interest.
`Mentor Graphics was authorized on March 21, 2013 to file a motion
`for additional discovery covering the same exact two issues. Paper 20. On
`March 29, 2013, Mentor Graphics filed a motion for additional discovery.
`Paper 21. On April 25, 2013, the Board denied the motion. Paper 24. The
`time for filing a request for rehearing of that decision was within 14 days of
`entry of the decision. 37 C.F.R. § 42.71(d)(1). Mentor Graphics did not file
`a rehearing request within the allotted time frame.
` When asked why the Board should consider yet another motion(s) for
`additional discovery, counsel for Mentor Graphics indicated that having the
`advantage of the Board’s previous decision on its first motion for additional
`discovery Mentor Graphics would like to supplement its explanation for why
`the discovery would be necessary for this proceeding. Counsel for Mentor
`Graphics also indicated that he was not given the opportunity to include in
`Mentor Graphics’ motion for additional discovery, a request for additional
`discovery based on the issue of privity at the time of filing the petition. The
`Board disagrees. Mentor Graphics requested authorization to raise that issue
`
`
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`5
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`Case IPR2012-00042
`Patent 6,240,376 B1
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`in a motion for additional discovery and the Board granted that request. See
`Papers 19 and 20. That Mentor Graphics did not include the issue in its
`motion for additional discovery is of no moment. The Board provided the
`opportunity to do so. Mentor Graphics made a litigation decision to not
`make the argument when it could have. Lastly, counsel for Mentor Graphics
`could not articulate a reason why the Board should authorize the filing of
`more motions for additional discovery considering the patent owner
`response is due June 21, 2013. For these reasons, Mentor Graphics request
`to file two separate motions for additional discovery was denied.
`
`
`Motion to amend
`
`
`
`Counsel for Mentor Graphics sought guidance in filing a motion to
`amend. The parties are directed to the Patent Trial Practice Guide for
`guidance. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
`48766-48767 (Aug. 14, 2012). More specifically, in any motion to amend
`Mentor Graphics files, the motion must explain in detail how the proposed
`substitute claims obviates the grounds of unpatentability authorized in this
`trial and clearly identify where corresponding written description support in
`the specification can be found for each claim added. If the motion to amend
`includes a proposed substitution of claims beyond a one-for-one substitution,
`the motion must explain why more than a one-for-one substitution of claims
`is necessary. 37 C.F.R. § 42.121. For further guidance regarding these
`requirements, the parties were directed to two recent Board decisions: (1)
`IPR2012-00005, Paper 27 (June 3, 2013) and (2) IPR2012-00027, Paper 26
`(June 11, 2013).
`
`
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`6
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`Case IPR2012-00042
`Patent 6,240,376 B1
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`
`During the call, counsel for Mentor Graphics inquired whether Mentor
`Graphics could present separate contingent motions to amend; each
`contingent upon the Board’s denying of the other. A patent owner is
`authorized to file one motion to amend. 37 C.F.R. § 42.121(a). Alternate
`contingent motions to amend are not contemplated by that rule. Counsel for
`Mentor Graphics inquired whether he can propose to substitute two claims
`for one independent claim. Mentor Graphics would have to present a special
`circumstance to do so. In that regard, the parties are directed to the decision
`in IPR2012-00027, Paper 26 at 8-9.
`During the conference call, counsel for Mentor Graphics presented
`various hypothetical proposed substitute claims for consideration. The
`Board discussed such hypothetical proposed substitute claims as best it
`could without providing an advisory opinion on whether a motion to amend
`with the certain proposed hypothetical claims would be granted. Providing
`such an advisory opinion at this juncture would be premature and possibly
`could prejudice Synopsys.
`
`
`
`Order
`
`It is
`ORDERED that Mentor Graphics’ request for a one week extension
`of DUE DATE 1 is DENIED;
`FURTHER ORDERED that Mentor Graphics’ request for
`authorization to file three separate motions, each to dismiss this proceeding,
`is DENIED; and
`FURTHER ORDERED that Mentor Graphics’ request for
`
`
`
`7
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`Case IPR2012-00042
`Patent 6,240,376 B1
`
`authorization to file two separate motions for additional discovery is
`DENIED.
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`8
`
`
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