`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SYNOPSYS, INC.
`Petitioner
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`v.
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`Patent of MENTOR GRAPHICS CORPORATION
`Patent Owner
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`____________
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`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
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`PETITIONER’S REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE EVIDENCE UNDER 37
`C.F.R. 42.64(c)
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`1
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`
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS ............................................................................................i
`THE BOARD’S HOLDING IN REDLINE DETECTION THAT
`I.
`ASSIGNOR ESTOPPEL IS NOT A DEFENSE IN AN INTER
`PARTES REVIEW WAS A DEFINITIVE STATEMENT OF
`LAW AND GOVERNS THIS CASE..............................................................1
`THE BOARD’S DETERMINATION THAT 35 U.S.C. § 315(b)
`REQUIRES PRIVITY IN 2006 IS THE LAW OF THE CASE. .................2
`III. THE BOARD SHOULD EXCLUDE MG 2030-31 AND MG 2033.............3
`IV. CONCLUSION .................................................................................................5
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`II.
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`i
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`
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`Petitioner’s Reply in Support of Motion to Exclude Evidence
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`IPR2012-00042
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`Pursuant to 37 C.F.R. 42.23, Petitioner Synopsys, Inc. submits this Reply to
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`Patent Owner’s Opposition to Petitioner’s Motion to Exclude Evidence under 37
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`C.F.R. § 42.64(c) (Paper 47).
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`I. THE BOARD’S HOLDING IN REDLINE DETECTION THAT
`ASSIGNOR ESTOPPEL IS NOT A DEFENSE IN AN INTER PARTES
`REVIEW WAS A DEFINITIVE STATEMENT OF LAW AND
`GOVERNS THIS CASE.
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`The Board has stated definitively that it “does not recognize, and thus,
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`would not apply, assignor estoppel.” Redline Detection, IPR2013-00106, Paper 40
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`at 6 (October 1, 2013). Patent Owner casts this statement of Board law as merely
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`an “interlocutory decision,” and argues that “the Board in IPR2013-00106 has not
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`issued any final appealable decision on the matter.” The Board’s unambiguous
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`statement of law controls in this proceeding. Whether the Redline decision is
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`appealable is irrelevant.
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`Patent Owner argues that “the Board has yet to make a decision with respect
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`to assignor estoppel in the present case.” Id. The Board in Redline confronted the
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`question of whether it “has the authority to recognize the equitable defense in an
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`inter partes review.” Redline Detection, Paper 40 at 3 (emphasis added). The
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`Board left no doubt that its decision applied to inter partes reviews generally:
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`The question of the Board’s ability to apply the doctrine of assignor
`estoppel to prevent the institution of an inter partes review, however,
`is a question of law, not fact. Consequently, any effort spent
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`1
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`Petitioner’s Reply in Support of Motion to Exclude Evidence
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`IPR2012-00042
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`developing a factual record now would be wasteful, for the Board
`does not recognize, and, thus, would not apply, assignor estoppel.
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`Id. at 6 (emphasis added). Furthermore, the very paragraph in which the Board
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`rejected assignor estoppel in Redline referenced this proceeding. Redline
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`Detection, IPR2013-00106 (paper 31) at 4.
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`Patent Owner imagines a finding by the Board that assignor estoppel does
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`not apply in this proceeding and warns that, in a hypothetical appeal by Petitioner,
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`the reviewing court would not have access to Patent Owner’s purported evidence.
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`Opp. at 3. But Petitioner seeks exclusion of such evidence from this trial, not
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`expungement. Any argument that the exhibits would vanish is baseless.
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`Patent Owner also contends that its evidence of assignor estoppel should be
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`admitted because “Patent Owner disagrees with the aforementioned interlocutory
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`decision” in Redline. Id. Patent Owner’s opinion of the Board’s statement of law
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`regarding assignor estoppel is of no consequence here. The Board should exclude
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`as irrelevant all evidence on assignor estoppel.
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`II. THE BOARD’S DETERMINATION THAT 35 U.S.C. § 315(b)
`REQUIRES PRIVITY IN 2006 IS THE LAW OF THE CASE.
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`Patent Owner likewise argues that the Board’s decision on the relevant legal
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`standard for privity should not bar evidence on this rejected theory because Patent
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`Owner “disagrees with the Board’s legal determination.” Id. at 4. The Board’s
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`determination that privity must have been present in 2006 is the law of the case.
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`2
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`Petitioner’s Reply in Support of Motion to Exclude Evidence
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`IPR2012-00042
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`Patent Owner also contends that “Director Rea on behalf of the USPTO
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`argued that a §315(b) bar requires privity to have existed at the time the Petition
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`seeking the review was filed . . .” Opp. at 4-5. For this, Patent Owner points to a
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`memorandum filed by the USPTO in Patent Owner’s failed attempt to persuade a
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`district court to vacate the Board’s decision to institute inter partes review. Patent
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`Owner ignores the fact that the USPTO endorsed the Board’s finding that this inter
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`partes review was not barred by § 315(b), because EVE and Synopsys were not in
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`privity when Synopsys filed its petition for inter partes review. Memorandum of
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`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
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`Judgment, Mentor Graphics Corp. v. Rea, No. 1:13-cv-518 (Dkt. No. 38), at 24-25
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`(E.D. Va. May 24, 2013). Under USPTO’s reading of § 315(b) or the Board’s, §
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`315(b) provides no basis to bar this trial. Therefore, all evidence regarding a §
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`315(b) bar is irrelevant and should be excluded.
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`III. THE BOARD SHOULD EXCLUDE MG 2030-31 AND MG 2033
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`Patent Owner argues that Petitioner waived its objections to MG 2030, MG
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`2031, and MG 2033 because the objections were served late. Due to an
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`inadvertent error, Petitioner served its objections one business day (and two total
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`days) late. While regrettable, this minimal delay—Petitioner’s first in this
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`proceeding—did not affect any subsequent deadlines and Patent Owner suffered no
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`3
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`Petitioner’s Reply in Support of Motion to Exclude Evidence
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`IPR2012-00042
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`prejudice as a result. Petitioner’s one day delay stands in stark contrast to Patent
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`Owner’s wholesale failure to serve any objections whatsoever.
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`Petitioner’s further argument that Patent Owner needed to object to MG
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`2030 and 2031 during Dr. Hutchings’ deposition misses the point and does not
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`foreclose Petitioner from objecting when Patent Owner subsequently filed and
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`served these exhibits, as Petitioner did. The purpose underlying the requirement to
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`object to deposition testimony during the deposition is to allow the questioner an
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`opportunity to cure (e.g., to rephrase a compound question). Here, where the
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`objection relates to the relevance of an exhibit, any such requirement would serve
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`no purpose. Moreover, requiring that Petitioner object to deposition exhibits
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`during the deposition would be impractical and prejudicial, since the deposition
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`cannot be halted to allow review of the exhibits for any future evidentiary
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`objections.
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`Patent Owner contends MG 2030 and MG 2031 relate to paragraph 33 of Dr.
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`Hutchings’ declaration. Patent Owner argues that this evidence is “relevant to
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`show the basis of this retraction.” Opp. at 7. However, Dr. Hutchings’ retracted
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`paragraph 33 before being shown MG 2030 or MG 2031. Accordingly, these
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`exhibits have no bearing on the basis for Dr. Hutchings’ retraction. Nor does
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`Patent Owner explain how a retraction may be relevant to any claim or defense in
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`this trial.
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`4
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`Petitioner’s Reply in Support of Motion to Exclude Evidence
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`IPR2012-00042
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`Patent Owner contends Petitioner failed to object to other exhibits within the
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`time period permitted by 37 C.F.R. 42.64. Opp. at 2. Petitioner objected to several
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`of these exhibits on grounds that the Board does not recognize assignor estoppel.
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`See Mot. to Exclude, Paper 44 at 3-5 (October 15, 2013). Petitioner could not have
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`objected prior to that date because Petitioner’s objection was based on an
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`intervening Board decision. Thus, Petitioner did not waive its objections.
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`Patent Owner contends almost all exhibits Petitioner challenges as hearsay
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`fall into the exception to the hearsay rule permitting statements against interest.
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`But this exception requires that the statement offered as evidence be contrary to the
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`declarant’s proprietary or pecuniary interest at the time “when made.” Fed. R.
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`Evid. 804(b)(3)(A) (emphasis added). In the absence of any explanation regarding
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`how the statements were against the declarants’ interests at the time they were
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`made, the Board should exclude these statements as hearsay.
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`IV. CONCLUSION
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`For the foregoing reasons, Synopsys respectfully requests that the Board
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`grant this motion and exclude the exhibits set forth above.
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`5
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`Petitioner’s Reply in Support of Motion to Exclude Evidence
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`IPR2012-00042
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`Dated:
`
`November 4, 2013
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`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
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`Attorneys for Petitioner
`Synopsys, Inc.
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`6
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`
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`CERTIFICATE OF SERVICE
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`The undersigned certifies e-mail service on the Patent Owner pursuant to 37
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`C.F.R. § 42.6(e) and agreement of counsel of a true copy of the foregoing
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`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE
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`EVIDENCE UNDER 37 C.F.R. 42.64(c) to counsel of record for Patent Owner as
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`follows:
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`Christopher L. McKee and Michael S. Cuviello
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`Mentoripr@bannerwitcoff.com
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`Dated:
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`November 4, 2013
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`By:
`
`/Victor Santos/
`
`Victor Santos
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`OHSUSA:755056032.3
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`i
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