`Trials@uspto.gov
`Tel: 571-272-7822
`
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` Paper 20
`
`Entered: 21 March 2013
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SYNOPSYS, INC.
`Petitioner
`
`v.
`
`MENTOR GRAPHICS CORPORATION
`Patent Owner
`_______________
`
`Case IPR2012-00042 (SCM)
`Patent 6,240,376 B1
`_______________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`JENNIFER S. BISK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
`On March 21, 2013, the following individuals participated in the
`initial conference call:1
`
`
`1 The initial conference call is held to discuss the Scheduling Order and any
`motions that the parties anticipate filing during the trial. Office Patent Trial
`
`
`
`IPR2012-00042
`Patent 6,240,376 B1
`
`
`(1) Mr. William Wright and Mr. Travis Jensen, counsel for Synopsys,
`
`Inc.;
`
`(2) Mr. Christopher McKee and Mr. Michael Cuviello, counsel for
`Mentor Graphics Corporation; and
`(3) Sally Medley, Howard Blankenship, and Jennifer Bisk,
`Administrative Patent Judges.2
`In preparation for the initial call, patent owner Mentor Graphics filed
`a motions list. Paper 19. During the call, counsel for Mentor Graphics
`represented that Mentor Graphics seeks authorization to file a motion for
`additional discovery. The explanation for the motion is listed on pages 3-5
`on Mentor Graphics motions list. Counsel for Synopsys did not oppose the
`Board granting Mentor Graphics authorization to file the motion, but
`indicated that Synopsys would oppose the motion.
`As discussed, a party moving for additional discovery must show that
`such additional discovery is in the interest of justice. 37 C.F.R. §
`42.51(b)(2). Based on the facts of this case, Mentor Graphics is authorized
`to file a motion for additional discovery.
`Counsel for Synopsys indicated that Synopsys does not seek
`authorization to file any motions at this time. As discussed, if Mentor
`Graphics determines that it will file a motion to amend, they must arrange a
`conference call with the Board and opposing counsel to discuss the proposed
`motion to amend.
`Neither party indicated any issues with the Scheduling Order (Paper
`17) entered on February 22, 2013. Lastly, the parties represented that they
`
`
`Practice Guide, 77 Fed. Reg. 48756, 48765 (Aug. 14, 2012).
`2 In addition, a court reporter was present.
`2
`
`
`
`
`
`IPR2012-00042
`Patent 6,240,376 B1
`
`have no report regarding settlement.
`It is
`ORDERED that Mentor Graphics is authorized to file a motion for
`additional discovery under 37 C.F.R. § 42.51(b)(2);
`FURTHER ORDERED that Mentor Graphics motion is due March
`29, 2013, and is limited to 15 pages;
`FURTHER ORDERED that Synopsys is authorized to file an
`opposition due April 4, 2013, and is limited to 15 pages; and
`FURTHER ORDERED that a reply by Mentor Graphics is not
`authorized at this time.
`
`
`
`
`
`
`PETITIONER:
`
`William H. Wright
`Travis Jensen
`Orrick, Herrington & Sutcliffe, LLP
`Email: wwright@orrick.com
`Email: tjensen@orrick.com
`
`PATENT OWNER:
`
`Christopher L. McKee
`Michael S. Cuviello
`Banner & Witcoff, Ltd.
`Email: mentoripr@bannerwitcoff.com
`
`
`
`
`
`3
`
`
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