IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Trial No.:
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`IPR 2012-00042
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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
`
`Alain Raynaud
`Luc M. Burgun
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`Patent Owner: 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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`Inventors:
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`For:
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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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`REPLY IN SUPPORT OF PATENT OWNER’S MOTION TO EXCLUDE
`DECLARATION TESTIMONY OF DR. BRAD HUTCHINGS UNDER 37
`C.F.R. §42.64(c)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Trial No.:
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`IPR 2012-00042
`
`
`
`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
`
`Patent Owner: 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
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`Inventors:
`
`For:
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`REPLY IN SUPPORT OF PATENT OWNER’S MOTION TO EXCLUDE
`DECLARATION TESTIMONY OF DR. BRAD HUTCHINGS UNDER 37
`C.F.R. §42.64(c)
`
`
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`Reply In Support of Patent Owner’s Motion To Exclude
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` IPR2012-00042
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`Patent Owner properly preserved its right to move to exclude the declaration
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`testimony of Dr. Hutchings, by timely objecting to the testimony once the
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`deficiency in the basis of Dr. Hutchings’ opinions was revealed in cross-
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`examination. The bases for the objection were not evident from the declaration
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`itself. Petitioner’s attempts to justify Dr. Hutchings’ reliance on the contingency
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`of a Board ruling of anticipation, in place of considering and forming an opinion
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`regarding the scope and meaning of the contingent amended claims in their
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`entirety, fail to establish admissibility of the testimony under Fed. R. Evid. 702.
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`I. Patent Owner’s Objection was Timely
`Petitioner urges that the basis for Patent Owner’s objection was evident from
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`Dr. Hutchings’ declaration itself, and thus that Patent Owner’s objection was
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`untimely. Petitioner’s Opposition (Paper No. 48) at 3. This is incorrect. There is
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`no indication in Dr. Hutchings’ declaration that he had failed to consider the
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`amended claims in their entirety. To the contrary, Dr. Hutchings’ declaration
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`indicates that he had reviewed the `376 patent and Patent Owner’s Substitute
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`Motion To Amend (see Hutchings Decl. (Ex. 1013) at ¶ 9), and that his opinions
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`were based on that review. Id. at ¶ 11. Further, Dr. Hutchings acknowledged in
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`his declaration that “claim terms are to be construed in light of the surrounding
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`claim language . . . .” Id. at ¶ 14 (emphasis added). Nowhere does Dr. Hutchings’
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`declaration indicate what cross-examination revealed to be the case. Dr. Hutchings
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`1
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`Reply In Support of Patent Owner’s Motion To Exclude
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`IPR2012-00042
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`did not consider or form an opinion about the unamended portions of the proposed
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`substitute claims. Instead, he relied on the contingency of the Board finding the
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`original claims anticipated by Gregory as a reason not to consider these portions.
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`As set forth in detail in Patent Owner’s Motion to Exclude (Paper No. 42),
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`the limited nature of Dr. Hutchings’ review and consideration of the amended
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`claims was revealed in his cross-examination. Id. at 5-8. Thus, it was not until
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`completion of cross-examination of Dr. Hutchings that Patent Owner had a basis
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`for raising its objection. Patent Owner made its objection within five business
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`days following the deposition where the bases for the objection arose, and thus
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`Patent Owner should be considered to have timely objected within the spirit of
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`Rule 42.64(b)(1).
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`II. Dr. Hutchings’ Opinions, Based Only On Amended Portions of the
`Claims, Are Incompetent and Inadmissable under Fed. R. Evid. 702
`Petitioner relies on the law of the case doctrine in its attempt to justify the
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`incomplete bases for its expert’s opinions. But this doctrine has no application to
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`the current scenario.1 First, there is no law of the case in this IPR regarding
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`1 The case principally relied upon by petitioner, Transocean Offshore Deepwater
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`Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340 (Fed. Cir. 2012),
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`provides no support for Petitioner’s position. The Court there merely held that it
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`was error to permit a “jury to engage in fact finding regarding whether [two prior
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`2
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`Reply In Support of Patent Owner’s Motion To Exclude
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`IPR2012-00042
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`unpatentability of the patent claims at issue. Secondly, Dr. Hutchings is
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`Petitioner’s proffered expert offering an evidentiary opinion, not a party or fact
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`finder (e.g., jury). Regardless of any law of the case, Dr. Hutchings’ opinions must
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`be well founded in order to be admissible under Fed. R. Evid. 702. They are not.
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`Dr. Hutchings apparently agrees, a priori, with a decision the Board has yet
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`to make. With respect to elements of the original patent claims that are also
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`present in the amended claims, he relies solely on the contingency of the Board
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`finding the patent claims in the trial to be anticipated by Gregory. Blindly
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`presuming how the Board might ultimately rule, Dr. Hutchings fails to fulfill his
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`obligation as a testifying expert to consider all the facts necessary to provide a
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`well-founded opinion.
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`art references] disclose all of the claim elements,” given a prior decision that had
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`concluded that the two references presented a prima facie case of obviousness.
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`Id.at 1348. What Petitioner failed to mention is the Court’s further holding that “it
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`was not error to allow the jury to consider the strength of that prima facie case in
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`making the ultimate determination of obviousness. When the ultimate question of
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`obviousness is put to the jury, the jury must be able to review all of the evidence of
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`obviousness.” Id. at 1349. Petitioner’s other case citations, none of which deal
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`with a scenario comparable to the instant one, are similarly inapposite.
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`3
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`Reply In Support of Patent Owner’s Motion To Exclude
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`IPR2012-00042
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`Contrary to the premise of Petitioner’s argument, a Board decision that the
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`original claims are anticipated by Gregory would not eliminate the need for a
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`consideration of the amended claims in their entirety. The amended portions of the
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`claims must be considered in the context of the claims as a whole.2 They are not
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`independent modules that can be lifted from the claims and considered in isolation.
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`For example, one cannot competently opine on whether Gregory discloses
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`alone, or renders obvious in view of the alleged knowledge of one skilled in the art,
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`the amended claim 34 portion without considering and forming an opinion
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`regarding the meaning and scope of the original claim 34 portions. The amended
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`portion of claim 34 reads, “generating instrumentation logic to provide the
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`instrumentation signal, the instrumentation logic comprising instrumentation logic
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`circuitry that is additional to circuitry specified in the source code.” This amended
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`portion is further defined by the original claim 34 recitation of “the instrumentation
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`signal being indicative of an execution status of the at least one statement [within
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`the RTL synthesized source code].” When asked whether it is possible “to create a
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`signal indicating execution status without additional logic gates” (emphasis added)
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`Dr. Hutchings could not answer the question because he had formed no opinion
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`2 Dr. Hutchings acknowledged this requirement (see Hutchings Decl. (Ex. 1013) at
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`¶ 14), but admittedly failed to fulfill it.
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`4
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`Reply In Support of Patent Owner’s Motion To Exclude
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`IPR2012-00042
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`about “execution status” (the subject matter of the original claim). Hutchings Dep.
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`T. (Ex. 2032) at 94. Thus, even with Dr. Hutchings’ assumption that the Board
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`will have found the original limitations anticipated by Gregory, Dr. Hutchings has
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`no idea if or how the scope of the amended features is affected by the original
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`claim features, because he admittedly did not consider those original features. Dr.
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`Hutchings’ opinion on the scope of the proposed amended claims is incomplete
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`and lacks the necessary foundation to be admissible under Fed. R. Evid. 702.
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`III. Conclusion
`For the above reasons, and those given in Patent Owner’s Motion to Exclude
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`(Paper No. 42), the declaration of Dr. Hutchings (Ex. 1013) should be excluded
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`from evidence.
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`Dated: November 4, 2013
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`Respectfully submitted,
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`MENTOR GRAPHICS CORP.
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`By:
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`/Christopher L. McKee/
`Christopher L. McKee
`Registration No. 32,384
`Michael S. Cuviello
`Registration No. 59,255
`Banner & Witcoff, Ltd.
`1100 13th Street, NW
`Suite 1200
`Washington, DC 20005
`Tel: (202) 824-3000
`Fax: (202) 824-3001
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`5
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`Reply In Support of Patent Owner’s Motion To Exclude
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` IPR2012-00042
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service on the Petitioner, pursuant to 37 C.F.R. §
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`42.6(e) and agreement of the parties, by email delivery of a true copy of the
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`foregoing REPLY IN SUPPORT OF PATENT OWNER’S MOTION TO
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`EXCLUDE DECLARATION TESTIMONY OF DR. BRAD HUTCHINGS
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`UNDER 37 C.F.R. §42.64(c) to counsel of record for Petitioner as follows:
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`Dated: November 4, 2013
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`William H. Wright, Esq.
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`wwright@orrick.com
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`Travis Jensen, Esq.
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`tjensen@orrick.com
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`/Christopher L. McKee/
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