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