`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 30
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`Entered: June 28, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`SYNOPSYS, INC.
`Petitioner
`
`v.
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`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.
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`MEDLEY, Administrative Patent Judge.
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`DECISION
`Motion to Amend
` 37 C.F.R. § 42.121
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`
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`On June 21, 2013, Mentor Graphics Corporation (“Mentor Graphics”)
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`filed a paper styled “PATENT OWNER’S MOTION TO AMEND UNDER
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`37 C.F.R. § 42.121.” Paper 29; “Motion to Amend.” The Motion to Amend
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`fails to comply with the rules and procedures governing inter partes reviews.
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`
`
`Case IPR2012-00042
`Patent 6,240,376 B1
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`The Motion to Amend is dismissed without prejudice to file a Substitute
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`Motion to Amend.
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`A motion to amend must include a claim listing. 37 C.F.R.
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`§ 42.121(b). The rule contemplates that the claim listing be a part of the
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`motion to amend, and not filed as a separate paper, an appendix to the
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`motion, or an attachment to the motion. Thus, the listing of claims is
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`included in the 15 page limit set forth per 37 C.F.R. § 42.24 (a)(1)(v) for
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`motions.
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`Mentor Graphics’ Motion to Amend does not include a claim listing.
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`Rather, Mentor Graphics filed the claim listing as an Appendix A. Paper 29,
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`1. However, by doing so, Mentor Graphics circumvented the motion page
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`limit. The Motion to Amend is dismissed without prejudice to refile a
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`“Substitute Patent Owner’s Motion to Amend.”
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`It is
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`
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`ORDERED that “PATENT OWNER’S MOTION TO AMEND
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`UNDER 37 C.F.R. § 42.121” (Paper 29) is dismissed without prejudice for
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`Mentor Graphics to file a “Substitute Motion to Amend” in compliance with
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`this order; and
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`FURTHER ORDERED that the substitute motion to amend is due
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`by July 3, 2013.
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`2
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`Case IPR2012-00042
`Patent 6,240,376 B1
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`PETITIONER:
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`William H. Wright
`Travis Jensen
`Orrick, Herrington & Sutcliffe, LLP
`Email: wwright@orrick.com
`Email: tjensen@orrick.com
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`PATENT OWNER:
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`Christopher L. McKee
`Michael S. Cuviello
`Banner & Witcoff, Ltd.
`Email: mentoripr@bannerwitcoff.com
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`3
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`
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