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