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 OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE DECLARATION TESTIMONY
`OF DR. BRAD HUTCHINGS UNDER 37 C.F.R. §42.64(c)
`
`OHSUSA:754956021.1
`
`
`____________
`
`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 OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE DECLARATION TESTIMONY
`OF DR. BRAD HUTCHINGS UNDER 37 C.F.R. §42.64(c)
`
`OHSUSA:754956021.1
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS.........................................................................................I
`I.
`THE BOARD SHOULD DENY PATENT OWNER’S MOTION
`BECAUSE THE PATENT OWNER FAILED TO OBJECT TO
`THE EVIDENCE IT NOW SEEKS TO EXCLUDE...................................2
`THE BOARD SHOULD DENY PATENT OWNER’S MOTION
`TO EXCLUDE ON THE MERITS...............................................................4
`III. CONCLUSION ..............................................................................................9
`
`II.
`
`OHSUSA:754956021.1
`
`
`
`Petitioner’s Opposition to Motion to Exclude Evidence
`
`IPR2012-00042
`
`Petitioner Synopsys, Inc. opposes Patent Owner’s motion to exclude the
`
`Declaration of Dr. Brad Hutchings (SYNOPSYS 1013) filed in support of
`
`Petitioner’s Opposition to Patent Owner’s Substitute Motion to Amend. Patent
`
`Owner’s motion to exclude Dr. Hutchings’ declaration is meritless and the Board
`
`should deny it for both procedural and substantive reasons.
`
`First, Rule 42.64(b)(1) requires that “[o]nce a trial has been instituted, any
`
`objection must be served within five business days of service of evidence to which
`
`the objection is directed.” The Board should deny Patent Owner’s motion because
`
`Patent Owner failed to serve any objection to Dr. Hutchings’ declaration.
`
`Second, the Board should deny Patent Owner’s motion on the merits
`
`because Dr. Hutchings’ testimony is competent. Patent Owner argues that Dr.
`
`Hutchings’ testimony is not competent and should be excluded because he did not
`
`separately opine on the elements of the unamended original claims. However,
`
`because Mentor’s proposed substitute claims were contingent on the Board already
`
`having found that Gregory (SYNOPSYS 1007) anticipates the original claims there
`
`was no need for Dr. Hutchings to separately address the unamended limitations of
`
`the original claims. Patent Owner cites no law that imposes a requirement that an
`
`expert engage in an unnecessary exercise. To the contrary, courts regularly permit
`
`experts to rely on the law of the case, a court’s claim construction, a party
`
`1
`
`
`
`Petitioner’s Opposition to Motion to Exclude Evidence
`
`IPR2012-00042
`
`admission, or stipulation from an opposing party regarding one or more claim
`
`terms or elements.
`
`I.
`
`THE BOARD SHOULD DENY PATENT OWNER’S MOTION
`BECAUSE THE PATENT OWNER FAILED TO OBJECT TO THE
`EVIDENCE IT NOW SEEKS TO EXCLUDE.
`
`The Board should deny Patent Owner’s motion to exclude Dr. Hutchings’
`
`declaration (SYNOPSYS 1013) because Patent Owner failed to object to the
`
`declaration. Rule 42.64(b)(1) requires that “[o]nce a trial has been instituted, any
`
`objection must be served within five business days of service of evidence to which
`
`the objection is directed.” See also OPTPG at II.K (“A party wishing to challenge
`
`the admissibility of evidence must object timely to the evidence at the point it is
`
`offered and then preserve the objection by filing a motion to exclude the
`
`evidence.”). Patent Owner does not dispute that it failed to comply with this rule.
`
`Mot. at 4. Neither was Patent Owner’s non-compliance a mere technicality.
`
`Rather, it was a wholesale failure to serve any objections.
`
`As when the Patent Owner ignored the Board’s page limit rules by filing
`
`oversize papers without permission (see, e.g., Request for Rehearing (paper 19)
`
`and Motion to Amend (paper 29)), Patent Owner believes it should be exempt from
`
`the Board’s procedural rules on evidence. Patent Owner argues that it would be
`
`“irrational and unjust” to apply Rule 42. Mot. at 4; see also Mot., n.3 (requesting
`
`2
`
`
`
`Petitioner’s Opposition to Motion to Exclude Evidence
`
`IPR2012-00042
`
`“waiver of Rule 42.64(b)(1)”). To the contrary, it would be irrational and unjust to
`
`excuse Patent Owner’s admitted non-compliance with the rule.
`
`Patent Owner seeks to excuse its failure to object by arguing that it learned
`
`for the first time during cross-examination that Dr. Hutchings did not render an
`
`“opinion regarding the scope and meaning of the claim term ‘execution status’”1
`
`from the unamended original claims. Mot. at 2-4. Apparently, Patent Owner
`
`failed to read Dr. Hutchings’ declaration where he stated that “I understand that,
`
`with the exception of claim 37, all of Mentor’s proposed substitute claims are
`
`contingent on the Board finding that the corresponding original claims are
`
`anticipated by Gregory.” Dec. of Dr. Hutchings (SYNOPSYS 1013), ¶ 26. The
`
`fact that Dr. Hutchings confirmed this during his deposition does not excuse the
`
`Patent Owner’s failure to file objections.2
`
`1 The only thing the numerous citations to Dr. Hutchings’ deposition testimony on
`pages 6-7 of Patent Owner’s motion show is that counsel for Patent Owner
`repeatedly asked the same question over and over again.
`
`2 Patent Owner’s further excuse that it could not have acted more diligently
`because “it was required under the Rules to notice the deposition of Dr. Hutchings
`ten business days in advance of the deposition” (Mot. at 4) is a non-sequitur.
`Patent Owner is seeking to exclude Dr. Hutchings’ declaration and a deposition
`was not needed to read Dr. Hutchings’ declaration.
`
`3
`
`
`
`Petitioner’s Opposition to Motion to Exclude Evidence
`
`IPR2012-00042
`
`Additionally, it is readily apparent from Dr. Hutchings’ declaration that he
`
`did not render a separate opinion on the claim term “execution status.” Thus,
`
`Patent Owner had every opportunity beginning on September 6, 2013 (the day Dr.
`
`Hutchings declaration was served) to object to Dr. Hutchings’ declaration but
`
`chose not to. Accordingly, Patent Owner’s motion to exclude should be denied for
`
`failure to comply with Rule 42.
`
`II.
`
`THE BOARD SHOULD DENY PATENT OWNER’S MOTION TO
`EXCLUDE ON THE MERITS.
`
`Should the Board address the substance of the motion to exclude, the Board
`
`should deny Patent Owner’s motion on its merits. Patent Owner contends that Dr.
`
`Hutchings’ “testimony is plainly not ‘based on sufficient facts or data’ or the
`
`product of ‘reliable principles and methods’ reliably applied to the facts of the
`
`case, as required by Fed. R. Evid. 702.” Mot. at 8. Without citing a single case,
`
`Patent Owner argues that Dr. Hutchings’ declaration should be excluded because
`
`he did not render an “opinion as to the meaning of ‘execution status.’” Mot. at 6.
`
`Patent Owner’s contention is meritless. An expert need not opine on matters fully
`
`resolved by the law of the case, a court’s claim construction, a party admission, or
`
`a stipulation regarding one or more claim terms or elements. In fact, requiring an
`
`expert to opine on such matters would run contrary to the Office’s goal “to conduct
`
`proceedings in a timely, fair, and efficient manner.” OPTPG, 77 FR 48756
`
`(August 14, 2012)
`
`4
`
`
`
`Petitioner’s Opposition to Motion to Exclude Evidence
`
`IPR2012-00042
`
`As explained in Synopsys’ Opposition to Patent Owner’s Motion to Amend,
`
`in Dr. Hutchings declaration, and in Dr. Hutchings deposition, the only way Dr.
`
`Hutchings’ declaration matters is if the Board finds that Gregory (SYNOPSYS
`
`1007) anticipates the challenged claims. This is so because Patent Owner proposed
`
`contingent substitute claims. Patent Owner’s Substitute Motion to Amend, paper
`
`31 at 5-6 (“Each of these proposed substitute claims is requested to be introduced
`
`only in the event that its corresponding original claim is determined to be
`
`unpatentable.”) and paper 39 at 1. Accordingly, Dr. Hutchings focused on the
`
`amended language in the substitute claims as a direct result of Patent Owner’s
`
`electing to pursue contingent substitute claims.
`
`Moreover, Dr. Hutchings’ declaration was submitted in support of
`
`Synopsys’ Opposition to Patent Owner’s Substitute Motion to Amend. Patent
`
`Owner did not substantively argue the patentability of its proposed substitute
`
`claims on the basis of the “execution status” limitation. Rather, Patent Owner
`
`confined its arguments to the amended language of the proposed claims. Thus,
`
`there was no need for Dr. Hutchings to opine on the execution status limitation as
`
`it was not at issue in the Motion to Amend.
`
`The Federal Rules of Evidence do not require, and the Board should not
`
`otherwise require, that an expert engage in an unnecessary exercise. Quite the
`
`opposite, courts regularly allow (if not encourage or require) litigants and their
`
`5
`
`
`
`Petitioner’s Opposition to Motion to Exclude Evidence
`
`IPR2012-00042
`
`experts to simplify proceedings by relying on determinations that the court has
`
`made or will make, including determinations regarding claim scope, validity, and
`
`infringement. For example, in Transocean Offshore Deepwater Drilling, Inc. v.
`
`Maersk Drilling United States, Inc., 699 F.3d 1340, 1348 (Fed. Cir. 2012), the
`
`Federal Circuit explained:
`
`We concluded that these references ‘present a prima facie case of
`obviousness.’ Transocean I, 617 F.3d at 1304. Transocean I thus
`establishes as law of the case that Horn and Lund teach every
`limitation of the asserted claims and provide a motivation to combine
`their respective teachings. It was thus erroneous for the district court
`to permit the jury to engage in fact finding regarding whether Lund
`and Horn disclose all of the claim elements.
`
`The logic of Transocean applies with equal force here. In that case it was
`
`erroneous for the district court to permit the jury to even question “whether Lund
`
`and Horn disclose all of the claim elements” because the court already decided the
`
`issue. Here, it would similarly be erroneous for the Board to require Dr.
`
`Hutchings’ to opine on matters that the Board will necessarily decide and which
`
`are a predicate to Dr. Hutchings’ opinions.
`
`The Federal Circuit has applied similar reasoning in other contexts,
`
`including where the court will make a determination in the future. See, e.g., In re
`
`Innotron Diagnostics, 800 F.2d 1077, 1085 (Fed. Cir. 1986) (“Economy is served
`
`because in the trial of the patent issues the validity of the patent and Innotron’s
`
`6
`
`
`
`Petitioner’s Opposition to Motion to Exclude Evidence
`
`IPR2012-00042
`
`affirmative defenses will be determined and will become law of the case and thus
`
`removed from [the trial on other issues].”).
`
`Patent Owner’s analysis gets things exactly backwards—district courts
`
`exclude expert testimony when it is contrary to a judge’s rulings on claim terms or
`
`scope, not when the testimony is consistent or coextensive with the judge’s rulings.
`
`Cf. LP Matthews LLC v. Bath & Body Works, Inc., 458 F. Supp. 2d 198, 210 (D.
`
`Del. 2006) (“to the extent that the court’s claim construction and related decisions
`
`are inconsistent with the opinions expressed in their respective expert reports, such
`
`opinions will not be admitted at trial.”).
`
`At most, Patent Owner’s criticisms of Dr. Hutchings’ testimony go to the
`
`weight of the evidence, not its admissibility. See, e.g., i4i Ltd. P’ship v. Microsoft
`
`Corp., 598 F.3d 831, 854 (Fed. Cir. 2010); see also Shum v. Intel Corp., 633 F.3d
`
`1067, 1083-1084 (Fed. Cir. 2010).
`
`Patent Owner also contends that Dr. Hutchings’ testimony is incompetent
`
`because “he did not form a complete opinion regarding the meaning of
`
`‘instrumentation signal.’” Mot. at 7. Patent Owner’s argument about
`
`“instrumentation signal” fails for all the same reasons discussed above with respect
`
`to “execution status.” Although Patent Owner’s contingent claim amendments
`
`added additional limitations to the claims, Patent Owner’s proposed claims left the
`
`term “instrumentation signal” intact in every substitute claim. Accordingly, the
`
`7
`
`
`
`Petitioner’s Opposition to Motion to Exclude Evidence
`
`IPR2012-00042
`
`Board will have decided the “instrumentation signal” issue in the original claims in
`
`Petitioner’s favor before reaching the merits of Dr. Hutchings’ testimony regarding
`
`the contingent substitute claims.
`
`Patent Owner raises no separate arguments in support of its assertion that Dr.
`
`Hutchings’ testimony that Patent Owner’s contingent substitute claims are not
`
`“substantially identical” to their counterpart original claims is incompetent. Mot.
`
`at 3. Rather, Patent Owner simply states that this testimony should be excluded
`
`“[f]or the same reasons.” Id. Patent Owner’s argument thus fails for all the same
`
`reasons explained above with respect to the competency of Dr. Hutchings’
`
`testimony as to anticipation and obviousness.
`
`Ironically, Patent Owner criticizes Dr. Hutchings for “treat[ing] all of
`
`Mentor’s proposed claims collectively” and using a representative claim
`
`amendment as shorthand. Mot. at 8. However, Patent Owner does the same thing
`
`in its Motion to Amend at pages 12-14. Thus, if Patent Owner is correct that such
`
`an approach makes it “impossible” to determine “whether the contingent substitute
`
`claims are substantially identical to their respective original patent claims” (Mot. at
`
`8) then Patent Owner’s Motion to Amend similarly fails to show that the claims are
`
`“substantially identical.”
`
`In sum, the Board’s determination that Gregory (SYNOPSYS 1007)
`
`anticipates the challenged claims of the ’376 patent will provide “sufficient facts or
`
`8
`
`
`
`Petitioner’s Opposition to Motion to Exclude Evidence
`
`IPR2012-00042
`
`data” for Dr. Hutchings’ assumption that those claim elements are present in
`
`Gregory and the Board should not exclude Dr. Hutchings’ declaration
`
`(SYNOPSYS 1013).
`
`III. CONCLUSION
`
`For the foregoing reasons, Synopsys respectfully requests that the Board
`
`deny Mentor’s motion to exclude Dr. Hutchings’ declaration.
`
`9
`
`
`
`Petitioner’s Opposition to Motion to Exclude Evidence
`
`IPR2012-00042
`
`Dated:
`
`October 28, 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.
`
`10
`
`
`
`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 OPPOSITION TO PATENT OWNER’S MOTION TO
`
`EXCLUDE DECLARATION TESTIMONY OF DR. BRAD HUTCHINGS
`
`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 28, 2013
`
`By:
`
`/AnitaChou/
`
`Anita Chou
`
`OHSUSA:754956021.1
`
`
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
