UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SYNOPSYS, INC.
`Petitioner
`
`v.
`
`Patent of MENTOR GRAPHICS CORPORATION
`Patent Owner
`
`____________
`
`Case IPR2012-00042 (SCM)
`Patent 6,240,376 B1
`
`Mail Stop Patent Board, PTAB
`United State Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`PETITIONER’S MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. 42.64(c)
`
`OHSUSA:754731655.6
`
`1
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SYNOPSYS, INC.
`Petitioner
`
`v.
`
`Patent of MENTOR GRAPHICS CORPORATION
`Patent Owner
`
`____________
`
`Case IPR2012-00042 (SCM)
`Patent 6,240,376 B1
`
`Mail Stop Patent Board, PTAB
`United State Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`PETITIONER’S MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. 42.64(c)
`
`OHSUSA:754731655.6
`
`1
`
`
`
`TABLE OF CONTENTS
`
`II.
`
`TABLE OF CONTENTS......................................................................................... i
`EXHIBIT LIST....................................................................................................... ii
`I.
`PATENT OWNER’S ASSIGNOR ESTOPPEL EVIDENCE IS
`IRRELEVANT BECAUSE THE BOARD DOES NOT
`RECOGNIZE THE DOCTRINE..................................................................2
`PATENT OWNER’S EVIDENCE OF POST-2006 PRIVITY
`BETWEEN EVE AND SYNOPSYS IS IRRELEVANT TO
`WHETHER § 315(B) BARS THE INSTITUTION OF THIS
`INTERPARTESREVIEW...........................................................................6
`III. EXHIBITS SUBMITTED WITH PATENT OWNER’S REPLY
`IN SUPPORT OF ITS SUBSTITUTE MOTION TO AMEND
`ARE IRRELEVANT. ..................................................................................10
`IV. CONCLUSION ............................................................................................11
`
`OHSUSA:754731655.6
`
`i
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`
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`Petitioner’s Motion to Exclude Evidence
`
`IPR2012-00042
`
`EXHIBIT LIST
`
`Previously Filed
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`U.S. Patent No. 6,240,376 to Raynaud, et al.
`
`Prosecution history of application Serial No. 09/127,584, which matured
`into the ‘376 patent.
`Chen, et al., “A Source-Level Dynamic Analysis Methodology and Tool
`for High-Level Synthesis,” Proceedings of the Tenth International
`Symposium on System Synthesis, 1997, pp. 134-140, Sep. 1997.
`Koch, et al., “Breakpoints and Breakpoint Detection in Source Level
`Emulation,” ISSS Proceedings of the 9th International Symposium on
`System Synthesis, pp. 26-31 (1996).
`Koch Publication information from CiteCeerX and ACM archives.
`
`Koch, et al., “Debugging of Behavioral VHDL Specifications by Source
`Level Emulation,” Proceedings of the European Design Automation
`Conference, pp. 256-261, September 1995.
`U.S. Patent No. 6,132,109 to Gregory, et al.
`
`HDL-ICETM ASIC Emulation System, Quickturn Design Systems, Inc.
`
`Prosecution history for application Serial No. 08/566,401, which matured
`into U.S. Patent No. 5,838,948.
`U.S. Patent No. 5,960,191 to Sample, et al.
`
`Transcript of Initial Conference Call, Mar. 21, 2013
`
`U.S. Patent No. 6,363,520 to Boubezari et al.
`
`Declaration of Dr. Brad Hutchings in support of Petitioner’s Opposition
`to Patent Owner’s Substitute Motion to Amend
`Excerpts from Field-Programmable Gate Array Technology, Stephen M.
`Trimberger, 1994.
`
`ii
`
`
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`Petitioner’s Motion to Exclude Evidence
`
`IPR2012-00042
`
`EXHIBIT LIST (CONT’D)
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`Taking Advantage of Reconfigurable Logic, Bradly K. Fawcett, Seventh
`Annual IEEE International Proceedings, ASIC Conference, 1994, pgs.
`227-230
`Effects of FPGA Architecture on FPGA Routing, Stephen Trimberger,
`32nd ACM/IEEE Design Automation Conference, 1995
`A Reprogrammable Gate Array and Applications, Stephen Trimberger,
`Proceedings of the IEEE, Vol. 81, No. 7, July 1993
`Proper Use of Hierarchy in HDL-Based High Density FGPA Design,
`Carol A. Fields, published in Lecture Notes in Computer Science, 1995
`at pgs. 168-177
`Deposition Transcript of Dr. Majid Sarrafzadeh dated August, 22, 2013
`
`Declaration of Travis Jensen.
`
`Currently Filed
`
`1021
`
`1022
`
`Synopsys’s Objections to Patent Owner’s Exhibits in Support of
`Response served on June 28, 2013
`
`Synopsys’s Objections to Exhibits in Patent Owner’s Reply in Support of
`its Substitute Motion to Amend served on October 5, 2013.
`
`iii
`
`
`
`Petitioner’s Motion to Exclude Evidence
`
`IPR2012-00042
`
`Pursuant to 37 C.F.R. 42.64(c), Petitioner Synopsys, Inc. respectfully
`
`requests that the Board exclude 1) Patent Owner’s evidence related to assignor
`
`estoppel; 2) Patent Owner’s post-2006 evidence of an alleged privity relationship
`
`between EVE and Synopsys; and 3) three exhibits filed with Patent Owner’s Reply
`
`in Support of Its Substitute Motion to Amend.
`
`First. The Board should exclude all of Patent Owner’s exhibits relating to
`
`assignor estoppel because the Board recently expressly held that assignor estoppel
`
`is not a legally cognizable defense in an inter partes review. Thus, the evidence is
`
`irrelevant.
`
`Second. The Board should exclude all of Patent Owner’s exhibits that relate
`
`to a purported post-2006 privity relationship between EVE and Synopsys because
`
`such evidence is irrelevant under the Board’s ruling that “§ 315(b) requires a
`
`privity relationship in 2006 when EVE was served with a complaint alleging
`
`infringement of the ’376 patent.” Dec. on Mot. for Add’l Discovery (paper 24) at
`
`3 (internal quotation omitted).
`
`Third. The Board should exclude Exhibits MG 2030 and MG 2031 because
`
`neither party cited or explained either exhibit in any paper. The Board should
`
`strike Exhibit 2033 because it relates to the conception date of the ’376 patent
`
`which is not at issue in this proceeding.
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`1
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`
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`Petitioner’s Motion to Exclude Evidence
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`IPR2012-00042
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`Additionally, much of Patent Owner’s evidence is hearsay and should be
`
`excluded for this independent reason.
`
`I. PATENT OWNER’S ASSIGNOR ESTOPPEL EVIDENCE IS
`IRRELEVANT BECAUSE THE BOARD DOES NOT RECOGNIZE
`THE DOCTRINE.
`
`The Board should exclude all of Patent Owner’s evidence relating to
`
`assignor estoppel. The evidence is irrelevant because assignor estoppel is not a
`
`defense in an inter partes review. Redline Detection, LLC v. Star Envirotech, Inc.,
`
`IPR2013-00106 (paper 31) at 4 (August 27, 2013).
`
`Patent Owner first raised the doctrine of assignor estoppel in its Motion for
`
`Additional Discovery (paper 21) prior to the Board’s decision in Redline
`
`Detection. Patent Owner asserted that the doctrine was available as a defense in an
`
`inter partes review proceeding. Id. at 5-9. The Board declined at that time to rule
`
`on the issue. Dec. on Mot. for Add’l Discovery (paper 24) at 2, n.1. However, the
`
`Board has since unambiguously held that assignor estoppel is not available in an
`
`inter partes review:
`
`To date, the Board has not had occasion to decide whether assignor
`estoppel may be raised successfully as a defense in an inter partes
`review. See IPR2012-00042 (Paper 24) 2, n.1. We conclude that it
`cannot.
`Redline Detection, IPR2013-00106 (paper 31) at 4. It is noteworthy that the Board
`
`specifically referenced IPR2012-00042—this proceeding—when holding that
`
`2
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`
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`Petitioner’s Motion to Exclude Evidence
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`IPR2012-00042
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`assignor estoppel is not a defense in an inter partes review. In response to a
`
`request for rehearing on this issue, the Board reiterated that it “does not recognize,
`
`and thus, would not apply, assignor estoppel.” Redline Detection, IPR2013-00106,
`
`paper 40 at 6 (October 1, 2013).
`
`As a consequence, all evidence submitted in relation to the doctrine of
`
`assignor estoppel is irrelevant and should be excluded. This includes the following
`
`exhibits:
`
` MG 2022 (Mot. for Add’l Discovery, paper 21 at 4): the patent assignment
`
`document for the application that became the ’376;
`
` MG 2024 (Mot. for Add’l Discovery, paper 21 at 5, n.4) and MG 2029 Ex.
`
`401 (Response, paper 28 at 18): slide presentation bearing the name of Luc
`
`Burgun, the founder of EVE;2
`
` MG 2025 (Mot. for Add’l Discovery, paper 21 at 5, n.4): an abbreviated
`
`version of the press release contained in MG 2006 and MG 2029 Ex. 33 (as
`
`discussed below), announcing Synopsys’s acquisition of EVE;
`
`1 MG 2029 is an omnibus 304-page collection of many other submissions,
`designated within MG 2029 as “Ex. 2,” “Ex. 3,” etc.
`
`2 Where two exhibits are addressed jointly it is because they are identical or
`substantively identical.
`
`3
`
`
`
`Petitioner’s Motion to Exclude Evidence
`
`IPR2012-00042
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` MG 2026 (Mot. for Add’l Discovery, paper 21 at 5, n.4) and MG 2029 Ex.
`
`20 (Response, paper 28 at 5): a screen shot of a LinkedIn profile page for
`
`Mr. Burgun;
`
` MG 2028 (Response, paper 28 at 3): a 1998 presentation by Mr. Burgun
`
`entitled “Meta-Systems R&D Organization and Roadmap”;
`
` MG 2029 Ex. 2 (Response, paper 28 at 3): Mr. Burgun’s assignment of the
`
`application that matured into the ’376 patent to Patent Owner;
`
` MG 2029 Ex. 3 (Response, paper 28 at 3): Mr. Burgun’s declaration and
`
`power of attorney accompanying the application that matured into the ’376
`
`patent;
`
` MG 2029 Ex. 9 (Response, paper 28 at 3): the ’376 patent;
`
` MG 2029 Ex. 10 (Response , paper 28 at 3, 17): EVE’s responses to Patent
`
`Owner’s first set of requests for admissions in the 2006 action;
`
` MG 2029 Ex. 11 (Response, paper 28 at 3): Mr. Burgun’s declaration in
`
`support of EVE’s motion to transfer the 2006 action;
`
` MG 2029 Ex. 17 (Response, paper 28 at 17): Article entitled “EVE:
`
`Looking Back on the Path Forward”;
`
` MG 2029 Ex. 18 (Response, paper 28 at 4): Mentor’s First Amended
`
`Complaint in the 2006 action;
`
`4
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`Petitioner’s Motion to Exclude Evidence
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`IPR2012-00042
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` MG 2029 Ex. 19 (Response, paper 28 at 3): EVE’s Corporate Disclosure
`
`Statement in the 2006 action;
`
` MG 2029 Ex. 21 (Response, paper 28 at 4): EVE’s Answer to Patent
`
`Owner’s First Amended Complaint;
`
` MG 2029 Ex. 27 (Response, paper 28 at 4): Patent Owner’s Memorandum
`
`in Support of its Motion for Partial Summary Judgment on Defendants’
`
`Invalidity Defense;
`
` MG 2029 Ex. 30 (Response, paper 28 at 4): Order of Dismissal in 2006
`
`action;
`
` MG 2029 Ex. 32 (Response, paper 28 at 16): Assignment of the ’376 patent
`
`to Patent Owner;
`
` MG 2029 Ex. 33 (Response, paper 28 at 5) and MG 2006 (Prelim. Resp.,
`
`paper 15 at 4): press release announcing Synopsys’s acquisition of EVE; and
`
` MG 2029 Ex. 34 (Response, paper 28 at 5): Synopsys’s Form 10-K for the
`
`year ending October 31, 2012;
`
`In addition, the Board should exclude as hearsay every exhibit Patent Owner
`
`has submitted in support of its assignor estoppel arguments except for MG 2029
`
`Ex. 9, the copy of the ’376 patent. Apart from the ’376 patent, all of these exhibits
`
`represent out-of-court statements offered for the truth of the matters asserted. The
`
`matters asserted are largely background information represented by Patent Owner
`
`5
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`
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`Petitioner’s Motion to Exclude Evidence
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`IPR2012-00042
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`as demonstrating “the relationship between Synopsys and EVE relative to the ’376
`
`patent.” Response (paper 28) at 3-5 and 14-19.
`
`In accordance with 37 C.F.R. § 42.64(b)(1), Synopsys initially raised
`
`relevance and hearsay objections to portions of MG 2028 and MG 2029 in its
`
`Objections to Patent Owner’s Exhibits in Support of Response served on June 28,
`
`2013 (SYNOPSYS 1021).
`
`II. PATENT OWNER’S EVIDENCE OF POST-2006 PRIVITY BETWEEN
`EVE AND SYNOPSYS IS IRRELEVANT TO WHETHER § 315(B)
`BARS THE INSTITUTION OF THIS INTERPARTESREVIEW.
`
`The Board should exclude Patent Owner’s exhibits relating to EVE or
`
`Synopsys’s conduct after the 2006 complaint against EVE because such evidence
`
`is irrelevant to whether EVE and Synopsys were in privity on the relevant date.
`
`Patent Owner asserted that 35 U.S.C. § 315(b) barred institution of this proceeding
`
`because EVE was served with a complaint alleging infringement of the ’376 patent
`
`in 2006. EVE is not a party to this proceeding, but Patent Owner argued that
`
`Synopsys was in privity with EVE, thereby triggering the § 315(b) bar. To support
`
`its argument, Patent Owner submitted evidence to establish that Synopsys and
`
`EVE were in privity at various points in time after the 2006 complaint.3
`
`3
`
`It is not clear what date Patent Owner now argues is the correct date for
`evaluating the § 315(b) bar. In any event, Mentor cannot prove that Synopsys and
`
`6
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`
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`Petitioner’s Motion to Exclude Evidence
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`IPR2012-00042
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`The Board rejected this analysis: “The legal standard adopted by the Board
`
`is that § 315(b) requires a privity relationship in 2006 when EVE was served with
`
`a complaint alleging infringement of the ’376 patent.” Dec. on Motion for Add’l
`
`Discovery (paper 24 at 3) (internal quotations omitted and emphasis added).
`
`Accordingly, all evidence of a post-2006 privity relationship between Synopsys
`
`and EVE is irrelevant and should be excluded. This includes the following:
`
` MG 2002 (Prelim. Resp., paper 15 at 3, n.1): EVE’s Motion for Extension
`
`of Time to Respond to Mentor’s First Amended Complaint;
`
` MG 2003 (Prelim. Resp., paper 15 at 3) and MG 2029 Ex. 30 (Response,
`
`paper 28 at 4): Order dismissing 2006 action;
`
` MG 2004 (Prelim. Resp., paper 15 at 3-4, 6-7 ) Complaint, Synopsys, Inc. v.
`
`Mentor Graphics Corp., No. 3:12-cv-05025-MMC, Dkt. No. 1 (N.D. Cal.
`
`September 27, 2012);
`
` MG 2005 (Prelim. Resp., paper 15 at 4, n.2): Banner & Witcoff messenger
`
`log;
`
` MG 2006 (Prelim. Resp., paper 15 at 4) and MG 2029 Ex. 33 (Response,
`
`paper 28 at 5): press release announcing Synopsys’s acquisition of EVE;
`
`EVE were in privity prior to, or on, the filing date of the petition for inter partes
`review with or without the challenged evidence.
`
`7
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`
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`Petitioner’s Motion to Exclude Evidence
`
`IPR2012-00042
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` MG 2007 (Prelim. Resp., paper 15 at 4, n.3): EVE’s Supplemental
`
`Corporate Disclosure in 2012 declaratory judgment action;
`
` MG 2013 (Req. for Rehearing, paper 18 at 21): Notice of Incomplete
`
`Petition (in an unrelated IPR);
`
` MG 2014 (Req. for Rehearing, paper 18 at 21): Response to Notice of
`
`Incomplete Petition (in an unrelated IPR);
`
` MG 2015 (Req. for Rehearing, paper 18 at 22): PTAB Notice of Filing Date
`
`Accorded to Petition and Time for Filing Patent Owner Preliminary
`
`Response (in an unrelated IPR);
`
` MG 2016 (Req. for Rehearing, paper 18 at 22): Declaration of Allison
`
`Anderson to authenticate the messenger log in MG 2005; and
`
` MG 2017 (Req. for Rehearing, paper 18 at 22): Notice of Filing Date
`
`Accorded to Petition and Notice for Setting the Time Period for Filing
`
`Patent Owner Preliminary Response.
`
`The Board’s exclusion of this evidence should come as no surprise to Patent
`
`Owner, because the Board previously placed Patent Owner on notice that evidence
`
`relating to its § 315(b) arguments was irrelevant:
`
`Mentor Graphics seeks discovery of such things as the effective filing
`date of the petition and the status of EVE as a real party-in-interest to
`the inter partes review. Motion [for Add’l Evidence at] 3. However,
`
`8
`
`
`
`Petitioner’s Motion to Exclude Evidence
`
`IPR2012-00042
`
`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.
`Dec. on Mot. for Add’l Discovery (Paper 24) at 3 (internal quotation omitted).
`
`Additionally, the U.S. District Court for the Eastern District of Virginia dismissed
`
`Patent Owner’s attempt to seek judicial review of the Board’s decision to not
`
`impose a § 315(b) bar. See Mentor Graphics Corp. v. Rea, No. 1:13-cv-518, Dkt.
`
`No. 47 (E.D. Va. July 25, 2013) (refusing to vacate Board’s decision to institute
`
`inter partes review).4
`
`As an independent basis for exclusion, the following exhibits are hearsay:
`
`MG 2002; MG 2003; MG 2004; MG 2005; MG 2006; MG 2007; MG 2016; MG
`
`2029 Ex. 30; and MG 2029 Ex. 33.
`
`4 Patent Owner has appealed to the Federal Circuit. See Notice of Appeal by
`Plaintiff Mentor Graphics Corporation, Mentor Graphics Corp. v. Rea, No. 1:13-
`cv-518, Dkt. No. 49 (E.D. Va. September 18, 2013). However, Patent Owner has
`indicated it does not intend to pursue this appeal pending a final decision in this
`inter partes action. See Unopposed Motion to Hold the Appeal in Abeyance,
`Mentor Graphics Corp. v. Rea, No. 13-1669, Dkt. No. 19 (Fed. Cir. Oct. 11, 2013).
`
`9
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`
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`Petitioner’s Motion to Exclude Evidence
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`IPR2012-00042
`
`III. EXHIBITS SUBMITTED WITH PATENT OWNER’S REPLY IN
`SUPPORT OF ITS SUBSTITUTE MOTION TO AMEND ARE
`IRRELEVANT.
`
`Patent Owner submitted four exhibits with its Reply in Support of Substitute
`
`Motion to Amend (paper 39). The Board should exclude three of these because
`
`they are irrelevant:
`
` MG 2030 and MG 2031: These exhibits are listed as “currently filed” in
`
`the exhibit list preceding Patent Owner’s Reply. Paper 39 at iv. However,
`
`neither is mentioned in the document itself. For this reason, they can have
`
`no relevance in this proceeding and should be excluded. At most, these
`
`exhibits pertain to paragraph 33 of Dr. Hutchings’ declaration, which was
`
`retracted during his deposition. See MG 2032 at 27:24-28:11.
`
` MG 2033: Patent Owner submitted the Declaration of William D. Davis
`
`(MG 2033) in an attempt to swear behind the Boubezari reference
`
`(SYNOPSYS 1012). However, as explained in Synopsys’s Opposition,
`
`“whether Boubezari qualifies as prior art is irrelevant here because
`
`[Synopsys] is relying on Boubezari to show the level of knowledge and skill
`
`in the art at the time of the invention, not as a prior art reference to be
`
`combined with Gregory.” Paper 35 at 9. As a result, whether or not Patent
`
`Owner can “swear behind” Boubezari is irrelevant and so is MG 2033.
`
`10
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`
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`Petitioner’s Motion to Exclude Evidence
`
`IPR2012-00042
`
`In accordance with 37 C.F.R. § 42.64(b)(1), Synopsys initially raised
`
`relevance objections to these three exhibits in its Objections to Exhibits in Patent
`
`Owner’s Reply in Support of its Substitute Motion to Amend served on October 5,
`
`2013 (SYNOPSYS 1022).
`
`IV. CONCLUSION
`
`For the foregoing reasons, Synopsys respectfully requests that the Board
`
`grant this motion and exclude the exhibits set forth above.
`
`11
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`
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`Petitioner’s Motion to Exclude Evidence
`
`IPR2012-00042
`
`Dated:
`
`October 15, 2013
`
`Respectfully submitted,
`
`By: /WilliamWright/
`William H. Wright
`CA Bar No. 161580
`Registration No. 36,312
`wwright@orrick.com
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`777 S. Figueroa St., Ste. 3200
`Los Angeles, California 90017
`Tel: 213-612-2020
`Fax: 213-612-2499
`
`Travis Jensen
`CA Bar No. 259925
`Registration No. 60,087
`tjensen@orrick.com
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`1000 Marsh Road
`Menlo Park, CA 94025-1015
`Tel: 650-614-7400
`Fax: 650-614-7401
`
`Attorneys for Petitioner
`Synopsys, Inc.
`
`12
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies e-mail service on the Patent Owner pursuant to 37
`
`C.F.R. § 42.6(e) and agreement of counsel of a true copy of the foregoing
`
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R.
`
`42.64(c) to counsel of record for Patent Owner as follows:
`
`Christopher L. McKee and Michael S. Cuviello
`
`Mentoripr@bannerwitcoff.com
`
`Dated:
`
`October 15, 2013
`
`By:
`
`/AnitaChou/
`
`Anita Chou
`
`OHSUSA:754731655.6
`
`i
`
`
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