`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Trial No.:
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`IPR 2012-00042
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`Inventors:
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`Patent Owner:
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`For:
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`In re U.S. Patent No. 6,240,376
`Application No.:
`09/127,587
` Filed:
`July 31, 1998
` Issued:
`May 29, 2001
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`Alain Raynaud
`Luc M. Burgun
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`Mentor Graphics Corporation
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`METHOD AND APPARATUS
`FOR GATE-LEVEL
`SIMULATION OF
`SYNTHESIZED REGISTER
`TRANSFER LEVEL DESIGNS
`WITH SOURCE-LEVEL
`DEBUGGING
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`Atty. Dkt. No.
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`007121.00004
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. §42.64(c)
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`Patent Owner’s Opposition to Petitioner’s Motion To Exclude Evidence IPR2012-00042
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`Table of Contents
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`I. PETITIONER WAIVED OBJECTIONS TO EVIDENCE IT NOW SEEKS TO
`EXCLUDE ........................................................................................................................ 1
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`A. EXHIBITS 2030, 2031 AND 2033 ............................................................................. 1
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`B. EXHIBITS 2002-2007, 2013-2017, 2022, 2024-2026 AND 2029
`(EXS. 2, 9, 32 AND 34) ............................................................................................. 2
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`II. PETITIONER’S OBJECTIONS ON RELEVANCE GROUNDS ARE MERITLESS ......... 2
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`A. PATENT OWNER’S EVIDENCE IN SUPPORT OF ITS ASSIGNOR
`ESTOPPEL DEFENSE IS RELEVANT .................................................................... 2
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`B. PATENT OWNER’S EVIDENCE IN SUPPORT OF ITS ARGUMENTS OF
`A BAR UNDER 35 U.S.C. §315(b) IS RELEVANT ................................................... 3
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`III. PETITIONER’S OBJECTIONS TO PATENT OWNER’S EXHIBITS 2030, 2031
`AND 2033 FILED WITH ITS REPLY IN SUPPORT OF ITS MOTION TO ARE
`MERITLESS (IN ADDITION TO BEING UNTIMELY) ...................................................... 6
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`IV. PETITIONER’S HEARSAY OBJECTIONS ARE MERITLESS ........................................ 7
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`V. CONCLUSION ............................................................................................................... 15
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`i
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`Patent Owner’s Opposition to Petitioner’s Motion To Exclude Evidence IPR2012-00042
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`Previously Filed
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`MG 2001
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`MG 2002
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`MG 2003
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`MG 2004
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`MG 2005
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`MG 2006
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`MG 2007
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`MG 2008
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`MG 2009
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`EXHIBIT LIST
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`First Amended Complaint in Mentor Graphics Corp. v. EVE-USA, Inc.
`and Emulation and Verification Engineering, SA, 6:06-CV-00341-AA
`(D. OR., filed March 13, 2006)
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`Defendants’ Unopposed Motion By Special Appearance For Extension
`Of Time To Respond To Plaintiff’s First Amended Complaint in Mentor
`Graphics Corp. v. EVE-USA, Inc. and Emulation and Verification
`Engineering, SA, 6:06-CV-00341-AA (D. Or., filed May 23, 2006)
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`Order of Dismissal in Mentor Graphics Corp. v. EVE-USA, Inc. and
`Emulation and Verification Engineering, SA, 6:06-CV-00341-AA (D.
`Or., filed November 20, 2006)
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`Complaint for Declaratory Judgment and Injunctive Relief in Synopsys,
`Inc., EVE-USA, Inc. and Emulation and Verification Engineering, S.A.
`v. Mentor Graphics Corp., 3:12-cv-05025 (N.D. Cal., filed September
`27, 2012)
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`Banner & Witcoff, Ltd.’s “Messenger Log”
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`October 4, 2012 Synopsys Press Release “Synopsys Acquires EVE”
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`EVE-USA’s Supplemental Corporate Disclosure Statement, Docket
`No. 7, filed October 26, 2012 in Synopsys, Inc. et al. v. Mentor
`Graphics Corp., 3:12-CV-05025 (N.D. Cal. filed September 27, 2012)
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`Jansen, D., The Electronic Design Automation Handbook, Kluwer
`Academic Publishers, 2003, Chapter 2
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`Bhatnagar, Advanced ASIC Chip Synthesis: Using Synopsys® Design
`Compiler™ and PrimeTime®, Kluwer Academic Publishers, 1999
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`MG 2010
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`Gregory et al. U.S. Patent No. 5,937,190
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`ii
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`Patent Owner’s Opposition to Petitioner’s Motion To Exclude Evidence IPR2012-00042
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`MG 2011
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`MG 2012
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`MG 2013
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`MG 2014
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`MG 2015
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`MG 2016
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`MG 2017
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`MG 2018
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`MG 2019
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`MG 2020
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`MG 2021
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`MG 2022
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`MG 2023
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`HDL Compiler™ for VHDL User Guide, Version F-2011.09-SP4, March
`2012, SYNOPSYS, Section 4
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`Plaintiffs’ Opposition to Mentor Graphics Corporation’s Motion to
`Transfer, dated January 25, 2013
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`Notice of Incomplete Petition, mailed November 30, 2012 in CMI Corp.
`v. Yoshiharu, et. al., PTAB Case IPR 2013-00066
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`Response to Notice of Incomplete Petition Issued November30, 2012,
`filed November 30, 2012 in CMI Corp. v. Yoshiharu, et. al., PTAB
`Case IPR 2013-00066
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`Notice of Filing Date Accorded to Petition and Time for Filing Patent
`Owner Preliminary Response, mailed December 5, 2012 in CMI Corp.
`v. Yoshiharu, et. al., PTAB Case IPR 2013-00066
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`Declaration of Allison Anderson
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`Notice of Filing Date Accorded to Petition and Notice for Setting the
`Time Period for Filing Patent Owner Preliminary Response
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`[Proposed] Patent Owner’s Requests for Production To Petitioner
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`[Proposed] Patent Owner’s Interrogatories To Petitioner
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`[Proposed] Patent Owner’s Requests for Admission To Petitioner
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`[Proposed] Patent Owner’s Notice of Deposition of Petitioner
`Synopsys
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`Assignment of the ‘376 Patent from inventors to Mentor Graphics Corp
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`Notice of Party Name Change, filed March 22, 2013, in EVE-USA, Inc.
`and Emulation and Verification Engineering, S.A. v. Mentor Graphics
`Corp., 3:12-cv-05025 (N.D. Cal., filed September 27, 2012)
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`MG 2024
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`Slide presentation “Meeting Verification Challenges” by Luc Burgun,
`VP, Synopsys Emulation Division, Verification Group, November 2012
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`iii
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`Patent Owner’s Opposition to Petitioner’s Motion To Exclude Evidence IPR2012-00042
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`MG 2025
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`MG 2026
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`MG 2027
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`MG 2028
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`MG 2029
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`MG 2030
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`MG 2031
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`MG 2032
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`Silicon Valley Wire press release “Mountain View Based Synopsys
`Acquires EVE,” dated October 4, 2012
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`LinkedIn Profile of Luc Burgun listing his employment history
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`Declaration of Majid Sarrafzadeh, PH.D in Support of Patent Owner
`Response, including Exhibits A through E thereto
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`Declaration of Michael Sapoznikow in Support of Mentor Graphics
`Corporation's Motion for Partial Summary Judgment, filed 05/31/13 in
`Case 3:10-cv-00954-MO Doc. 369 (exhibit 5)
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`Declaration Of Patrick M. Bible In Support Of Mentor Graphics
`Corporation’s Motion For Partial Summary Judgment, filed 05/31/13 in
`Case 3:10-cv-00954-MO Doc. 368 (exhibits 2, 3, 8, 9-11, 15, 18-21,
`27, 30, 32-34, 40)
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`Annotated Figure 13 of the Gregory et al. ‘109 Patent (Hutchings
`Deposition Exhibit)
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`Annotated Figure 17 of the Gregory et al. ‘109 Patent (Hutchings
`Deposition Exhibit)
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`Transcript of Deposition of Brad Hutchings Ph.D. conducted
`September 20, 2013
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`MG 2033
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`Declaration of William D. Davis
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`Currently Filed
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`MG 2034
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`Patent Owner’s Supplemental Evidence Pursuant to 37 C.F.R. §
`42.64(b)(2) (transmittal)
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`MG 2035
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`Declaration of Fabrice Touzard
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`iv
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`Patent Owner’s Opposition to Petitioner’s Motion To Exclude Evidence IPR2012-00042
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`MG 2036
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`MG 2037
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`Declaration of Elizabeth Offen-Brown Providing Supplemental
`Evidence in Response to Petitioner’s Rule 42.64(b)(1) Objections to
`Exhibits Submitted in Support of Patent Owner Response
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`Declaration of Patrick M. Bible Providing Supplemental Evidence in
`Response to Petitioner’s Rule 42.64(b)(1) Objections to Exhibits
`Submitted in Support of Patent Owner Response
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`v
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`Patent Owner’s Opposition to Petitioner’s Motion To Exclude Evidence IPR2012-00042
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`Patent Owner Mentor Graphics Corporation opposes Petitioner’s motion to exclude
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`evidence on the grounds set forth herein.
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`I. PETITIONER WAIVED OBJECTIONS TO EVIDENCE IT NOW SEEKS TO EXCLUDE
`A. EXHIBITS 2030, 2031 AND 2033
`Under 37 C.F.R. § 42.64(a), “[a]n objection to the admissibility of deposition
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`evidence must be made during the deposition.” No relevance objection was made to Patent
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`Owner’s Exhibits 2030 and 2031 at the deposition of Petitioner’s declarant Dr. Brad
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`Hutchings where the exhibits were introduced. Moreover, 37 C.F.R. § 42.64(b)(1) requires
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`service of any objections “within five business days of service of evidence to which the
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`objection is directed.” Patent Owner filed and served Exhibits 2030, 2031 and 2033 with its
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`Reply (Paper No. 39) in support of its motion to amend on September 26, 2013. Petitioner
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`first served objections to Exhibits 2030, 2031 and 2033 on Saturday, October 5, 2013 (see
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`Ex. 1022), which was beyond the five business day limit, and thus, its objections were
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`untimely. 37 C.F.R. § 42.64(a), (b)(1) and (c). See also, Office Patent Trial Practice Guide
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`(OPTPG), 77 Fed. Reg. 48756, 48767 (part K) (Aug. 14, 2012) (“A party wishing to
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`challenge the admissibility of evidence must object timely to the evidence at the point it is
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`offered . . .”)
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`1
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`Patent Owner’s Opposition to Petitioner’s Motion To Exclude Evidence IPR2012-00042
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`B. EXHIBITS 2002-2007, 2013-2017, 2022, 2024-2026 AND 2029 (EXS. 2, 9, 32
`AND 34)1
`Objections to the above exhibits in Petitioner’s Motion to Exclude (Paper No. 44)
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`were not raised in advance of its Motion to Exclude, or within the time required by 37 C.F.R.
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`§ 42.64. Thus, Petitioner has waived any objection to these exhibits. Id.; see also, OPTPG,
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`77 Fed. Reg. 48756, 48767 (part K) (Aug. 14, 2012) (“A party wishing to challenge the
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`admissibility of evidence must object timely to the evidence at the point it is offered . . .”)
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`II. PETITIONER’S OBJECTIONS ON RELEVANCE GROUNDS ARE MERITLESS
`A. PATENT OWNER’S EVIDENCE IN SUPPORT OF ITS ASSIGNOR ESTOPPEL
`DEFENSE IS RELEVANT
`Petitioner objects to Patent Owner’s evidence supporting its argument that the IPR is
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`barred by assignor estoppel, urging that the evidence lacks relevance in view of a panel
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`decision by the Board that assignor estoppel does not apply to IPR proceedings. Paper No.
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`44 at 2-6. The panel decision cited, Paper No. 31 in IPR2013-00106 (Redline Detection LLC
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`1 Exhibit 2029 has subparts appearing in the native document including, among others,
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`exhibits 2, 9, 32 and 34. In response to authentication objections by Petitioner (not raised
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`in Petitioner’s motion to exclude), Patent Owner timely served supplemental evidence (Ex.
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`2034) including a Declaration of Patrick M. Bible (Ex. 2037). In addition to providing
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`authentication of exhibit 2029, exhibit 2037 may assist the Board by providing a correlation
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`of the exhibit 2029 page numbers to a Bible litigation declaration from which the exhibit
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`2029 pages are excerpted.
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`2
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`Patent Owner’s Opposition to Petitioner’s Motion To Exclude Evidence IPR2012-00042
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`v. Star Envirotech, Inc.), is an interlocutory decision denying discovery on the issue of
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`assignor estoppel. The Board in IPR2013-00106 has not issued any final appealable
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`decision on the matter, the Board has yet to make a decision with respect to assignor
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`estoppel in the present case, and no Court has addressed the issue. Assignor estoppel is
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`an equitable doctrine and the evidence Petitioner seeks to exclude is essential to the Board
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`in weighing the equities of the parties. Further, should the Board rule that assignor estoppel
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`does not apply here and should such a ruling be appealed, the evidence will be essential in
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`the appeal to determine whether the Board decided the equities correctly.
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`Patent Owner disagrees with the aforementioned interlocutory decision in IPR2013-
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`00106, and urges that assignor estoppel does apply to bar the present IPR, for the reasons
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`set forth in Patent Owner’s Response (Paper No. 28) at 2-6 and 14-22. The evidence
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`Petitioner seeks to exclude (Exhibits 2006, 2022, 2024-2026, 2028 and 2029 (Exs. 2, 3, 9-
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`11, 17-21, 27, 30, 32-34 and 40)) is indisputably relevant to assignor estoppel barring the
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`instant IPR as urged by Patent Owner. Thus, this evidence should be admitted.2
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`B. PATENT OWNER’S EVIDENCE IN SUPPORT OF ITS ARGUMENTS OF A
`BAR UNDER 35 U.S.C. §315(b) IS RELEVANT
`Patent Owner’s evidence (Exs. 2002-2007, 2016, and 2029 (Exs. 30 and 33))
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`2 Further, even if the Board were to rule as a matter of law in the present IPR that assignor
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`estoppel is not applicable, the evidence should be admitted in the interest of providing a
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`complete record for purposes of appeal of this legal issue of first impression.
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`3
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`Patent Owner’s Opposition to Petitioner’s Motion To Exclude Evidence IPR2012-00042
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`introduced in support of its argument that the present IPR is barred by 35 U.S.C. § 315(b) is
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`relevant.3 Petitioner’s reliance on the Board’s previous statement that “[t]he legal standard
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`adopted by the Board is that § 315(b) requires a privity relationship in 2006 when EVE was
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`served with a complaint alleging infringement of the `376 patent” is misplaced for two
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`reasons. First, the Board’s decision to deny Patent Owner’s motion to take additional
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`discovery was interlocutory. Patent Owner disagrees with the Board’s legal determination as
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`to the point in time at which privity must exist for a privity-based § 315(b) bar to arise, for the
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`reasons set forth in Patent Owner’s Request for Rehearing (Paper No. 18), and in its Patent
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`Owner’s Response (Paper No. 28). See, Paper No. 18 at 2-19, and Paper No. 28 at 3-7.
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`Second, in Patent Owner’s Federal District Court action challenging this Board’s
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`decision to institute the instant trial over the asserted § 315(b) bar,4 Director Rea on behalf
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`3 As discussed in section I, Petitioner failed to timely object to exhibits 2002-2007 and 2013-
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`2017, and thus, any objection to these exhibits is waived. Further, exhibits 2013-2015 are
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`not evidence, but rather are cited papers from an unrelated IPR. Exhibit 2017 is Paper
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`No. 3 (a Board Notice) in the instant IPR.
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`4 Mentor Graphics Corp. v. Rea, 1:13CV00518 (E.D. Va., filed April 29, 2013) (dismissed for
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`lacked jurisdiction under the Administrative Procedures Act; appeal to CAFC currently
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`pending (Case: 13-1669); parties have jointly requested appeal be held in abeyance
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`pending a final decision in the instant IPR).
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`4
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`Patent Owner’s Opposition to Petitioner’s Motion To Exclude Evidence IPR2012-00042
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`of the USPTO, argued that a § 315(b) bar requires privity to have existed at the time the
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`Petition seeking the review was filed, not that a lack of privity at the time of the earlier
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`patent infringement action precludes a § 315(b) bar as the Board found. See, e.g.,
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`Memorandum of Law in Support of Defendant’s Motion To Dismiss, Or in the Alternative, for
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`Summary Judgment and In Opposition To Plaintiff’s Motion for Summary Judgment (Dkt.
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`No. 38), at 24-29 (section entitled: “USPTO Has Reasonably Interpreted that Section 315(b)
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`Privy status Is Determined as of the Time a Petition is Filed”). The USPTO’s position in the
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`District Court action dictates that the Board reconsider its interlocutory decision, and the
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`evidence the Petitioner seeks to exclude is relevant to that reconsideration.
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`Exhibits 2002-2007, 2016 and 2029 (Exs. 30 and 33)) are indisputably relevant to
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`the § 315(b) bar urged by Patent Owner to be applicable to the instant IPR, and/or to the
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`privity relationship that existed between Petitioner and its wholly owned subsidiary EVE both
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`as of the time the Petition was filed and after, but prior to the decision to institute this IPR.
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`Moreover, this evidence is relevant to the asserted status of EVE as a real party in interest
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`to the IPR petition that was filed, and the bar arising under § 315(b) on this basis (an issue
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`on which the Board has not previously ruled in this IPR), as urged in Patent Owner’s
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`Response (Paper No. 28) at 2-14. This evidence should thus be admitted. 5
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`5 Further, if the evidence were to be excluded (and hence not considered), and if on appeal
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`the Court of Appeals of the Federal Circuit were to disagree with the Board on these legal
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`5
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`Patent Owner’s Opposition to Petitioner’s Motion To Exclude Evidence IPR2012-00042
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`III. PETITIONER’S OBJECTIONS TO PATENT OWNER’S EXHIBITS 2030, 2031 AND
`2033 FILED WITH ITS REPLY IN SUPPORT OF ITS MOTION TO AMEND ARE
`MERITLESS (IN ADDITION TO BEING UNTIMELY)
`As demonstrated in Section I above, Petitioner’s objections to Exhibits 2030, 2031
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`2033 were waived. The objections are also meritless.
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`Exhibits 2030 and 2031 are exhibits introduced during the deposition of Petitioner’s
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`declarant Dr. Brad Hutchings. The transcript of the deposition was filed as Patent Owner’s
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`Exhibit 2032, without any objection by Petitioner. Exhibits to 2030 and 2031 are referenced
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`in the transcript at pages 55-57, where the deponent was questioned about these Exhibits.
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`These Exhibits form an integral part of the record of the deposition, along with the
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`deposition transcript (Exhibit 2032), and it is thus appropriate for these exhibits to be
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`admitted to the record on this basis alone.
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`Exhibits 2030 and 2031 are relevant to issues addressed in Patent Owner’s Reply
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`(Paper No. 39) in support of its substitute motion to amend. As Petitioner acknowledges, the
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`Exhibits, annotated drawing figures of the Gregory patent, pertain to paragraph 33 of Dr.
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`Hutchings declaration (Ex. 1013) that Dr. Hutchings retracted as incorrect during his
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`deposition (see Ex. 2032 at 27-28 and 54-55). This was noted in Patent Owner’s Reply
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`(Paper No. 39) at 2. The Exhibits are thus relevant to show the basis of this retraction,
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`issues of first impression, then it is more likely that a remand of the case back to the Board
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`to consider the excluded evidence under the correct standard would be required.
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`6
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`Patent Owner’s Opposition to Petitioner’s Motion To Exclude Evidence IPR2012-00042
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`which bears on the issues of what Gregory discloses (and does not disclose), and the
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`credibility of the witness.
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`Ex. 2033, a declaration submitted by Patent Owner to swear behind the Boubezari
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`reference (Ex. 1012), is relevant because Petitioner has asserted that the Boubezari
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`reference qualifies as prior art to the `376 patent under 35 U.S.C. §. 102(e). Paper No. 35
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`at 9.
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`Exhibit 2033 is unquestionably relevant to establish the non-prior art status of
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`Boubezari. It is also directly relevant to counter Petitioner’s allegation that the reference
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`provides evidence of the level of knowledge and skill in the art at the time of the invention
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`(of the `376 patent). As Patent Owner urged in its Reply (Paper No. 39) in support of its
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`motion to amend, given the non-prior art status of Boubezari as shown by Ex. 2033,
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`Boubezari does not provide competent evidence of the level of knowledge and skill in the art
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`at the time of the `376 patent invention. Paper No. 39 at 5. The narrow holding of Geo M.
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`Martin Co. v. Alliance Mach. Sys. Int’l, LLC, 618 F.3d 1294, 1305-06 (Fed. Cir. 2010)
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`provides no support for Petitioner’s contention of “simultaneous invention.” Id. Petitioner’s
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`reliance on Boubezari should be seen for what it is -- an improper “back door” attempt to
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`have a non-prior art reference considered as if it were prior art available for assessment of
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`alleged obviousness.
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`IV. PETITIONER’S HEARSAY OBJECTIONS ARE MERITLESS
`Petitioner moves to exclude a number of exhibits on the ground of hearsay. Paper
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`7
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`Patent Owner’s Opposition to Petitioner’s Motion To Exclude Evidence IPR2012-00042
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`No. 44 at 5 and 9. However, Petitioner failed to make timely hearsay objections to any
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`exhibits other than 2028 and 2029 (Exs. 10, 11, 15, 17-21, 27, 30, 33 and 40).6 See, Ex.
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`1021 at 4-6.
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`A. Exhibit 2028
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`In response to Petitioner’s hearsay objection to Exhibit 2028, Patent Owner’s
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`Supplemental Evidence Pursuant to 37 C.F.R. § 42.64(b)(2) (Ex. 2034 (filed herewith) was
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`timely served on July 15, 2013. Included with Patent Owner’s supplemental evidence was
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`the Declaration of Fabrice Touzard, The Declaration of Fabrice Touzard is not hearsay and
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`is filed herewith (Ex. 2035) in place of Exhibit 2028 as evidence of Luc Burgun’s role at
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`Mentor Graphics’ emulation division, in view of Petitioner’s motion to exclude Exhibit 2028
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`as hearsay. Exhibit 2028 is admissible as a document referenced by Fabrice Touzard in his
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`Declaration in explaining facts within his own personal knowledge.
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`B. Exhibits 2029 (Exs. 10, 11, 15, 17-21, 27, 30, 33 and 40)
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`Exhibit 2029 Ex. 10 is Defendant’s Responses to Mentor Graphics’ First Set of
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`Requests for Admission in Mentor Graphics Corp. v. EVE-USA, case No. 6:06-cv-00341-AA
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`(D. Or.). This exhibit is admissible pursuant to Fed.R.Evid. 804(b)(3) as a statement against
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`6 While Petitioner raised objections to exhibits 2029 (Exs. 30, 33, and 40), these exhibits are
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`identical or substantially identical to previously served exhibits 2003, 2006, and 2024, to
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`which no objection was timely raised.
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`8
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`Patent Owner’s Opposition to Petitioner’s Motion To Exclude Evidence IPR2012-00042
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`interest of a declarant who is unavailable as a witness. EVE, the declarant, is not a party to
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`this IPR and thus is effectively unavailable as a witness for the IPR.7 The admissions are
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`against EVE’s proprietary or pecuniary interest in a civil litigation and are supported by
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`corroborating circumstances that clearly indicate trustworthiness (served in prior litigation).
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`Exhibit 2029 Ex. 10 is also admissible under the Residual Exception of Fed.R.Evid. 807, as
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`EVE’s responses served pursuant to a duty imposed by the rules governing procedures in
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`Federal Courts in a prior civil litigation have equivalent circumstantial guarantees of
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`trustworthiness.
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`Exhibit 2029 Ex. 11 is the sworn Declaration of Luc Burgun in support of
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`Defendant’s Motion to Transfer in Mentor Graphics Corp. v. EVE-USA, case No. 6:06-cv-
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`00341-AA (D. Or). This exhibit is admissible pursuant to Fed.R.Evid. 804(b)(3) as a
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`statement against interest of a declarant who is unavailable as a witness. Luc Burgun, the
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`declarant, is not a party to this IPR and thus is effectively unavailable as a witness for the
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`IPR. The admissions are against Burgun’s own and Burgun’s employer EVE’s proprietary or
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`7 Under the PTAB Rules, even a party to the IPR would be unavailable as a witness without
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`agreement by the parties or the Board authorizing additional discovery. 37 C.F.R.
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`42.51(b)(2). Patent Owner sought, but was denied, additional discovery on the issues of
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`assignor estoppel, privity and real party in interest to which the Burgun and Eve
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`statements relate in 2029 Ex. 10, 11,15, 17, 19, 20. See Paper No. 24.
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`9
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`Patent Owner’s Opposition to Petitioner’s Motion To Exclude Evidence IPR2012-00042
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`pecuniary interest in a civil litigation and are supported by corroborating circumstances that
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`clearly indicate trustworthiness (sworn to under penalty of perjury and filed with the court in
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`a prior litigation). Exhibit 2029 Ex. 11 is also admissible under Fed.R.Evid. 807, as
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`Burgun’s declaration in a prior civil litigation was sworn to under penalty of perjury and has
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`equivalent circumstantial guarantees of trustworthiness.
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`Exhibit 2029 Ex. 15 is Defendant’s Initial Disclosures in Mentor Graphics Corp. v.
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`EVE-USA, case No. 6:06-cv-00341-AA (D. Or). This exhibit is admissible pursuant to
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`Fed.R.Evid. 804(b)(3) as a statement against interest of a declarant who is unavailable as a
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`witness. EVE, the declarant, is unavailable as a witness for the IPR. The admissions are
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`against EVE’s proprietary or pecuniary interest in a civil litigation and are supported by
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`corroborating circumstances that clearly indicate trustworthiness (served in prior litigation).
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`Exhibit 2029 Ex. 15 is also admissible under Fed.R.Evid. 807, as EVE’s initial disclosures
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`were served pursuant to a duty imposed by the rules governing procedures in Federal
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`Courts in a prior civil litigation and have equivalent circumstantial guarantees of
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`trustworthiness.
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`Exhibit 2029 Ex. 17 is a published article of an interview of Luc Burgun, entitled
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`“EVE: Looking Back on the Path Forward.” Burgun admitted in the interview his
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`involvement in the development of the ZeBu emulators and “stressed that he has personally
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`maintained his role in the technical development of [EVE’s] products, along with his CEO
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`duties.” Ex. 2029 (Ex.17) at 13. Petitioner challenges this statement as inadmissible
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`10
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`Patent Owner’s Opposition to Petitioner’s Motion To Exclude Evidence IPR2012-00042
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`hearsay. This exhibit is admissible pursuant to Fed.R.Evid. 804(b)(3) as a statement against
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`interest of a declarant who is unavailable as a witness. The declarant Luc Burgun (as well
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`as his employer EVE on whose behalf he made the published statements) is unavailable as
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`a witness for the IPR. The admissions are against Burgun’s and his employer EVE’s
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`proprietary or pecuniary interest.
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`Regardless,
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`the circumstances surrounding
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`the article demonstrate
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`its
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`trustworthiness and, thus, admissibility under Fed. R. Evid. 807(a)(1). EVE’s own website
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`includes a link to the article, indicating EVE’s endorsement of its contents. Offen-Brown
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`Decl., Ex. 2036 at 19.8 The reporter, herself, attests to the accuracy of the article. Offen-
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`Brown Decl., Ex. 2036 at 12. Petitioner does not provide any reason to doubt the credibility
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`or veracity of the article. Exhibit 2029 Ex. 17 is also admissible under Fed.R.Evid. 807, as
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`the publication of the interview of Burgun’s statements on behalf of his employer EVE have
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`circumstantial guarantees of trustworthiness.
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`Exhibit 2029 Ex. 18 is plaintiff’s First Amended Complaint for Patent Infringement in
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`Mentor Graphics Corp. v. EVE-USA, case No. 6:06-cv-00341-AA (D. Or.).9 This exhibit is
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`8 In response to Petitioner’s hearsay objection, Patent Owner’s timely served supplemental
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`evidence (Ex. 2034) including a Declaration of Elizabeth Offen-Brown (Ex. 2036).
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`9 This exhibit is the same document as Exhibit 2001 filed with Patent Owner’s Preliminary
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`Response to which Petitioner did not object.
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`11
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`Patent Owner’s Opposition to Petitioner’s Motion To Exclude Evidence IPR2012-00042
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`not hearsay. See, Fed.R.Evid. 801(c)(2). The First Amended Complaint is not offered to
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`prove the truth of the matters asserted in the complaint, i.e., that EVE actually infringed as
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`alleged. The First Amended Complaint is offered to show that a suit alleging patent
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`infringement was initiated and the allegations forming the basis for the infringement lawsuit.
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`Exhibit 2029 Ex. 18 is also admissible under Fed.R.Evid. 807. The First Amended
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`Complaint was filed in a prior litigation and has equivalent circumstantial guarantees of
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`trustworthiness. The First Amended Complaint (available on the court’s ECF system) shows
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`that a lawsuit was initiated and the allegations forming the basis for the lawsuit.
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`Exhibit 2029 Ex. 19 is defendant’s Corporate Disclosure Statement in Mentor
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`Graphics Corp. v. EVE-USA, case No. 6:06-cv-00341-AA (D. Or.). This exhibit is admissible
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`pursuant to Fed.R.Evid. 804(b)(3) as a statement against interest of a declarant who is
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`unavailable as a witness. EVE, the declarant, is unavailable as a witness for the IPR. The
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`admissions were served in a prior litigation and are against EVE’s proprietary or pecuniary
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`interest in a civil litigation and are supported by corroborating circumstances that indicate
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`trustworthiness. Exhibit 2029 Ex. 19 is also admissible under Fed.R.Evid. 807, as EVE’s
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`Corporate Disclosure Statement was prepared and filed with the court pursuant to a duty
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`imposed by the rules governing procedures in Federal Courts in a prior civil litigation and
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`has equivalent circumstantial guarantees of trustworthiness.
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`12
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`Patent Owner’s Opposition to Petitioner’s Motion To Exclude Evidence IPR2012-00042
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`Exhibit 2029 Ex. 20 is a LinkedIn Profile of Luc Burgun.10 This exhibit is admissible
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`pursuant to Fed.R.Evid. 804(b)(3) as a statement against interest of a declarant who is
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`unavailable as a witness. The declarant Luc Burgun (as well as his employer EVE on whose
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`behalf he made the published statements), is unavailable as a witness for the IPR. The
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`admissions are against Burgun’s and his employer EVE’s proprietary or pecuniary interest.
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`Further, the statements are supported by corroborating circumstances that indicate
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`trustworthiness as there is no evidence that any effort or attempt was ever made by either
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`Burgun or EVE to retract the Profile statements. Exhibit 2029 Ex. 20 is also admissible
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`under Fed.R.Evid. 807. The Profile has circumstantial guarantees of trustworthiness, as the
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`Profile is in the nature of a public announcement by Burgun about himself.
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`Exhibit 2029 Ex. 21 is defendant’s Answer to First Amended Complaint for Patent
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`Infringement in Mentor Graphics Corp. v. EVE-USA, case No. 6:06-cv-00341-AA (D. Or.).
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`This exhibit is not hearsay. See, FRE 801(c)(2). The Answer to First Amended Complaint is
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`not offered to prove the truth of the matters asserted in the answer, i.e., that the asserted
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`patents are actually invalid as alleged. The Answer to First Amended Complaint is offered to
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`show that in response to allegations of patent infringement in the complaint, EVE asserted
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`invalidity as a defense. Exhibit 2029 Ex. 21 is also admissible under Fed.R.Evid. 807. The
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`10 Petitioner admits that Exhibit 2029 Ex. 19 is identical or substantial identical to Ex. 2026,
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`to which no timely objection was raised. See Paper 44 at 3 n. 2, and 4.
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`13
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`Patent Owner’s Opposition to Petitioner’s Motion To Exclude Evidence IPR2012-00042
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`Answer to First Amended Complaint was filed in a prior litigation and has equivalent
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`circumstantial guarantees of trustworthiness. The Answer to First Amended Complaint
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`(available on the court’s ECF system) shows that patent invalidity was asserted as a
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`defense to the infringement suit that was initiated.
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`Exhibit 2029 Ex. 27 is Plaintiff Mentor Graphics Corporation’s Memorandum in
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`support of its Motion for Partial Summary Judgment on Defendants’ Invalidity Defense in
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`Mentor Graphics Corp. v. EVE-USA, case No. 6:06-cv-00341-AA (D. Or.). This exhibit is not
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`hearsay in that the Memorandum is not offered to prove the truth of the matter asserted in
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`the Memorandum, i.e., that EVE was actually estopped by assignor estoppel as alleged.
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`See, Fed. R. Evid. 801(c)(2). The Memorandum is only offered to show that a summary
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`judgment motion was filed and the allegations forming the basis for the motion. Exhibit 2029
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`Ex. 27 is also admissible under Fed.R.Evid. 807, as it was filed in a prior litigation and has
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`equivalent circumstantial guarantees of trustworthiness. The memorandum (available on the
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`court’s ECF system) shows that a summary judgment motion was filed by the plaintiff on the
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`defendant’s invalidity defense and the bases alleged in support of that motion.
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`Exhibit 2029 Ex. 30 is the Order of Dismissal in Mentor Graphics Corp. v. EVE-USA,
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`case No. 6:06-cv-00341-AA (D. Or). This exhibit is admissible under Fed.R.Evid. 803(8) as
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`a public record signed by a Deputy Clerk of a United States District Court. Under
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`Fed.R.Evid. 1005, a proponent may use a copy to prove the content of an official record.
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`Exhibit 2029 Ex. 30 is also admissible under Fed.R.Evid. 807, as the Order was entered in a
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`14
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`Patent Owner’s Opposition to Petitioner’s Motion To Exclude Evidence IPR2012-00042
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`prior litigation and has equivalent circumstantial guarantees of trustworthiness. The Order
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`(available on the court’s ECF system) shows that the action was dismissed with prejudice.
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`Exhibit 2029 Exs. 33 and 40, which are Petitioner’s own press release entitled
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`“Synopsys Acquires EVE” and slide presentation entitled “Meeting Verification Challenges,”
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`are not hearsay, but rather a