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