Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper 14
`
`
` Entered: July 21, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ATOPTECH, INC.,
`Petitioner,
`
`v.
`
`SYNOPSYS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00760
`Patent 6,237,127 B1
`____________
`
`
`
`Before TRENTON A. WARD, PETER P. CHEN, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Motion for Joinder
`and Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
` Paper 14
`
`
` Entered: July 21, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ATOPTECH, INC.,
`Petitioner,
`
`v.
`
`SYNOPSYS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00760
`Patent 6,237,127 B1
`____________
`
`
`
`Before TRENTON A. WARD, PETER P. CHEN, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Motion for Joinder
`and Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`
`
`IPR2015-00760
`Patent 6,237,127 B1
`
`
`I. INTRODUCTION
`Petitioner Atoptech, Inc. filed a Petition (Paper 1, “Pet.”) to institute
`an inter partes review of claims 5 and 6 of U.S. Patent No. 6,237,127 B1
`(Ex. 1001, “the ’127 patent”). On the same day, Petitioner also filed a
`Motion for Joinder, requesting joinder of this proceeding with a related and
`instituted proceeding, IPR2014-01145. Paper 3 (“Joinder Motion”).
`Petitioner filed its Joinder Motion within one month after institution of a
`trial in IPR2014-01145, as required by 37 C.F.R 122(b). Patent Owner
`Synopsys, Inc. filed a Preliminary Response to the Petition. Paper 13
`(“Prelim. Resp.”). Patent Owner also filed an Opposition to Petitioner’s
`Motion for Joinder (Paper 9, “Opp. To Joinder”), and Petitioner filed a
`Reply to Patent Owner’s Opposition to Motion for Joinder (Paper 11,
`“Reply”).
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`inter partes review may be authorized only if “the information presented in
`the petition . . . and any [preliminary] response . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`For the reasons below, we determine that Petitioner has not shown
`that joinder is warranted in this instance. We also deny the Petition and do
`not institute inter partes review as to claims 5 and 6 of the ’127 patent.
`A. Related Proceedings
`The ’127 patent is involved in a district court proceeding in the U.S.
`District Court for the Northern District of California captioned Synopsys,
`Inc. v. ATopTech, Inc., Case No. 3:13-cv-02965-MMC (N.D. Cal. 2013).
`Pet. 1–2.
`
`
`
`2
`
`
`
`IPR2015-00760
`Patent 6,237,127 B1
`
`
`Additionally, on July 11, 2014, Petitioner filed a Petition (“First
`Petition”) to institute an inter partes review of claims 1–13 of the ’127
`patent in IPR2014-01145. On January 21, 2015, we instituted an inter
`partes review in IPR2014-01145 of claims 1–4 and 7–11 of the ’127 patent.
`Case IPR2014-01145, slip op. at 25 (PTAB Jan. 21, 2015) (Paper 7) (“the
`’1145 Decision”). In that Decision, we denied Petitioner’s request for inter
`partes review of claims 5, 6, 12, and 13 of the ’127 patent. Id.
`Subsequently, Petitioner filed its Petition in the instant proceeding on
`February 18, 2015, challenging claims 5 and 6 of the ’127 patent.
`B. The ’127 Patent
`The ’127 patent relates generally to the static timing analysis of digital
`electronic circuits, and in particular applies static timing analysis to
`synthesis of circuits by analyzing certain paths of a circuit using “non-
`default timing constraints known as exceptions.” Ex. 1001, Title, 1:8–11.
`Exceptions allow a circuit designer, working with a circuit synthesis system,
`to specify certain paths through the circuit to be synthesized as being subject
`to non-default timing constraints. Id., Abstract. The ’127 patent discloses
`that static timing analysis had been used to verify that the design of a digital
`electronic circuit would perform correctly at the target clock speeds, and
`“[f]or similar reasons, it would be useful to apply, as efficiently as possible,
`static timing analysis to the synthesis process.” Id. at 1:40–42. Specifically,
`the ’127 patent discloses performing static timing analysis on units of a
`circuit, referred to as “sections,” which comprise a set of “launch” flip flops,
`non-cyclic combinational circuitry, and a set of “capture” flip flops. Id. at
`2:1–4.
`
`
`
`3
`
`
`
`IPR2015-00760
`Patent 6,237,127 B1
`
`
`The static timing analysis described in the ’127 patent is accomplished
`in two main phases: (1) propagation of tagged rise-fall (RF) timing tables
`and (2) relative constraint analysis. Ex. 1001, 8:37–41. In the first phase of
`the timing analysis, delays between inputs and outputs of circuit devices are
`represented by “timing arcs.” Ex. 1001, 8:44–45. Using the timing arcs for
`the circuit devices, maximum and minimum delay values for the rise time
`and the fall time are determined and stored in RF timing tables. Id. at 9:54–
`67. The timing tables are propagated through the circuit and the delays at
`each circuit node are added to the minimum and maximum values of the
`timing table from the previous node. Id. at 9:58–13:2, Fig. 5. Additionally,
`each timing table is associated with a “tag” that may include clock identifier
`and a variety of “labels.” Ex. 1001, 3:11–15, 10:21–25. The labels of a
`“tag” also may identify points in the circuit referenced by an exception. Id.
`at 3:29–32.
`After the propagation of the timing tables through the circuit, the
`second phase of the timing analysis, relative constraint analysis, is
`performed. Id. at 13:3–4. Relative constraint analysis involves the
`comparison of the delay values included in the timing tables with the timing
`constraints of the circuit. Id. at 13:66–14:27. The ’127 patent describes
`maximum allowable path delays (MAPDs) and shortest allowable path
`delays (SAPDs), which are default timing constraints alterable by
`exceptions. Id. at 13:34–63, 14:30–38. The delay values stored in the
`timing tables are compared to the MAPD and SAPD values, and if the
`MAPD and SAPD timing constraints are satisfied, the circuit has passed the
`static timing analysis. Id. at 13:56–14:26.
`
`
`
`4
`
`
`
`IPR2015-00760
`Patent 6,237,127 B1
`
`
`Additionally, with respect to exceptions, the ’127 patent instructs
`“[e]xceptions are specified by the circuit designer as individual syntactic
`units called ‘exception statements’ which are comprised of a ‘timing
`alteration’ and a ‘path specification.’” Ex. 1001, 1:58–61. The timing
`alteration instructs the timing analyzer how to alter the default timing
`constraints for paths through the circuit to be analyzed which satisfy the path
`specification. Id. at 1:61–63. For example, a “set_false_path” exception
`indicates that for paths satisfying the path specification, the relevant MAPD
`value is set to infinity and the relevant SAPD value is set to zero for the
`relative constraint analysis. Id. at 14:47–54.
`II. DECISION ON THE MOTION FOR JOINDER
`A. Background
`The statutory provision governing joinder of inter partes review
`proceedings is 35 U.S.C. § 315(c), which reads as follows:
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311
`that
`the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`
`Section 315(b) of the statute generally bars institution of inter partes
`review when the petition is filed more than one year after the petitioner (or
`petitioner’s real party in interest or privy) is served with a complaint alleging
`infringement of the patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). That
`one-year time bar, however, does not apply to a request for joinder.
`35 U.S.C. § 315(b) (final sentence); 37 C.F.R. § 42.122(b). This is an
`important consideration here because Petitioner was served with a complaint
`
`
`
`5
`
`
`
`IPR2015-00760
`Patent 6,237,127 B1
`
`asserting infringement of the ’127 patent more than one year before filing
`the Petition in this proceeding. Pet. 1; Joinder Motion 2. The ’127 patent is
`involved in a district court proceeding in the U.S. District Court of the
`Northern District of California captioned Synopsys, Inc. v. ATopTech, Inc.,
`Case No. 3:13-cv-02965-MMC (N.D. Cal. 2013). Petitioner represents that
`the complaint was filed against Petitioner on June 26, 2013 (Ex. 1003), and
`subsequently served on July 12, 2013 (Ex. 1004). Pet. 1; Joinder Motion 2.
`Thus, absent joinder of this proceeding to IPR2014-01145, institution based
`on the current Petition is barred under 35 U.S.C. § 315(b).
`Joinder may be authorized when warranted, but the decision to grant
`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). As
`indicated in the legislative history, the Board will determine whether to grant
`joinder on a case-by-case basis, taking into account the particular facts of
`each case. See 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of
`Sen. Kyl) (when determining whether and when to allow joinder, the Office
`may consider factors including the breadth or unusualness of the claim
`scope, claim construction issues, and consent of the patent owner). When
`exercising that discretion, the Board is mindful that patent trial regulations,
`including the rules for joinder, must be construed to secure the just, speedy,
`and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b).
`As the moving party, Petitioner has the burden of proof in establishing
`entitlement to the requested relief. 37 C.F.R. 42.20(c).
`B. Analysis
`Petitioner argues that its Joinder Motion should be granted because
`Petitioner’s Motion and Petition are timely and submitted within one month
`of the January 21, 2015, institution of inter partes review in IPR2014-01145.
`
`
`
`6
`
`
`
`IPR2015-00760
`Patent 6,237,127 B1
`
`Joinder Motion 3. Petitioner further argues that joinder is appropriate
`because: (1) the subject matter of claims 5 and 6 is similar to that at issue in
`IPR2014-01145; (2) other panels have joined in similar circumstances; (3)
`joining the cases “will not increase the burden on either the Board or the
`Patent Owner”; (4) the Board has authority to grant joinder of inter partes
`proceedings filed by the same party; and (5) joinder “will not unduly delay
`the proceedings or otherwise prejudice Patent Owner.” Joinder Motion 4–
`12.
`
`In response, Patent Owner opposes Petitioner’s Joinder Motion and
`argues that Petitioner seeks a “second bite at the apple” to argue the same
`grounds of unpatentability presented in IPR2014-01145 in view of the
`Board’s broadest reasonable claim interpretation. Opp. To Joinder 1. More
`specifically, Patent Owner asserts that in the
`First
`‘127 Petition,
`the Petitioner proposed a claim
`interpretation that modified claim 5 by replacing the phrase
`“with the first label” with the phrase “with the first constraint
`value.”
` The First
`‘127 Petition
`justified
`this claim
`interpretation because, according to the Petitioner, the modified
`claim language makes more sense in the context of the ‘127
`patent. But the claim is amenable to interpretation without
`modification, and the Petitioner should have been able to
`anticipate that the Board would apply a broadest reasonable
`interpretation that is consistent with the actual language of the
`claim.
`
`Id. at 6–7. Patent Owner adds that the “Second ‘127 Petition includes new
`arguments and a new supporting Declaration that attempt to read claims 5
`and 6, as interpreted by the Board in connection with the First ‘127 Petition,
`on the same prior art references.” Id. at 3. In its Reply, Petitioner responds
`that regardless of whether Petitioner’s arguments could have been made in
`
`
`
`7
`
`
`
`IPR2015-00760
`Patent 6,237,127 B1
`
`the initial petition, joinder should be granted because its claim construction
`position was reasonable and it could not foresee the Board’s construction.
`Reply 3.
`
`Petitioner’s arguments are not persuasive. The alleged unforeseen
`construction by the Board was simply a refusal to accept Petitioner’s
`proposal to rewrite the challenged claim. Specifically, in IPR2014-01145,
`our Decision explained that claim 5 depends from claim 4 and recites
`“satisfying an exception, prior to comparing the first timing value, with the
`first label.” ’1145 Decision 17. Further, we noted that Petitioner’s proposed
`claim construction in that case would require a claim construction that the
`recited phrase “the first label” is merely a typographical drafting error that
`should be replaced with “the first constraint value” under the broadest
`reasonable interpretation of the term. Id. 8. However, we determined that
`the literal language of claim 5 is consistent with the Specification and did
`not indicate a drafting error or warrant the correction of a supposed drafting
`error through claim construction. Id.
`Here, the Petition in the instant case presents new arguments and new
`reasoning based on our claim construction in IPR2014-01145. Essentially,
`Petitioner is requesting a second chance to address the unpatentability of
`claims 5 and 6 over the same prior art at issue in the First Petition. Pet. 1–
`54. However, we are not persuaded a second chance would help “secure the
`just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
`§ 42.1(b). Although Petitioner argues that there are efficiencies to gain from
`addressing the same claims in the inter partes review that are at issue in the
`pending district court proceeding (see Joinder Motion 8), we are mindful
`that permitting second chances without constraint undermines judicial
`
`
`
`8
`
`
`
`IPR2015-00760
`Patent 6,237,127 B1
`
`efficiency by expending the Board’s limited resources on issues that were
`not presented adequately the first time around.
`Moreover, although there may be circumstances where a “second
`bite” for a petitioner is appropriate, the instant case is not one of them. In
`particular, we are not persuaded by Petitioner’s arguments that it could not
`have foreseen our claim construction of the phrase “satisfying an exception,
`prior to comparing the first timing value, with the first label” recited in
`claims 5 and 6. In IPR2014-01145, our claim construction and analysis of
`Petitioner’s asserted ground unpatentability were based on the literal
`language of claims 5 and 6. ’1145 Decision 8. In the First Petition,
`Petitioner could have reasonably presented arguments based on the express,
`literal language recited in claims 5 and 6. Nonetheless, Petitioner chose a
`different course and proposed the rewriting of the claims to address an
`alleged drafting error. Under these circumstances, we are not persuaded that
`Petitioner’s use of our Decision as a roadmap for a second attempt secures
`“the just, speedy, and inexpensive resolution of every proceeding.” See ZTE
`Corp. v. ContentGuard Holdings, Inc., Case IPR2013-00454, 2013 WL
`8595746, at *3 (PTAB Sept. 25, 2013) (“A decision to institute review on
`some claims should not act as an entry ticket, and a how-to guide . . . for
`filing a second petition to challenge those claims which it unsuccessfully
`challenged in the first petition.”). The instant Petition simply presents
`arguments that reasonably could have been made in IPR2014-001145, but
`were not.
`Additionally, we also are not persuaded by Petitioner’s citations to
`Samsung Elecs. Co., Ltd. v. Virginia Innovation Sciences, Inc., Case
`IPR2014-00557 (PTAB June 13, 2014) (Paper 10) and Enzymotec Ltd. v.
`
`
`
`9
`
`
`
`IPR2015-00760
`Patent 6,237,127 B1
`
`Neptune Techs. & Bioressources Inc., Case IPR2014-00556, slip op. at 6
`(PTAB July 9, 2014) (Paper 19). Joinder Motion 3–4, 7. Both cases state,
`what we have reiterated here, that the Board will determine whether to grant
`joinder on a case-by-case basis taking into account the particular facts of
`each case, substantive and procedural issues, and other considerations. See
`Samsung Elecs. Co., Paper 10, 16. Thus, in view of the particular facts and
`issues before us in the instant case, we exercise our discretion to deny
`Petitioner’s Joinder Motion.
`III. DECISION ON THE PETITION
`Institution of inter partes review is barred when the petition is filed
`more than one year after the petitioner is served with a complaint alleging
`infringement of the patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b).
`The record indicates Petitioner was served with a complaint asserting
`infringement of the ’127 patent more than one year before filing the Petition.
`Pet. 1–2. Accordingly, in view of our decision to deny Petitioner’s Joinder
`Motion, we deny the Petition because it was not filed within the time limits
`imposed under 35 U.S.C. § 315(b).
`
`
`
`
`
`10
`
`
`
`IPR2015-00760
`Patent 6,237,127 B1
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion for Joinder is denied;
`FURTHER ORDERED that the Petition is denied and no trial is
`instituted.
`
`PETITIONER:
`
`Jeffrey A. Miller
`KAYE SCHOLER LLP
`jeffrey.miller@kayscholer.com
`
`David Soofian
`KAYE SCHOLER LLP
`david.soofian@kayescholer.com
`
`PATENT OWNER:
`
`David B. Cochran
`JONES DAY
`dcochran@jonesday.com
`
`Joseph M. Sauer
`JONES DAY
`jmsauer@jonesday.com
`
`David W. Wu
`JONES DAY
`dwwu@jonesday.com
`
`
`
`
`11
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
