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Mentor Graphics Corporation v. Synopsys, Inc: Denying Motion to Submit Supplemental Information IPR2014-00287

Takeaway: A patent owner’s preliminary infringement contentions that are subsequently supplanted with amended contentions and a court’s claim construction order are likely to be of minimal relevance to the Board in construing the claims, but may be of some value based on potentially inconsistent statements.

In its Order, the Board denied Petitioner’s Motion to Submit Supplemental Information under 37 C.F.R. § 42.123(a).  Petitioner sought to file infringement contention excerpts that were served by Patent Owner in the related district court litigation.  Petitioner argued that portions of the infringement contentions were relevant to the broadest reasonable construction of certain claim terms in the instant proceeding based on how Patent Owner applied the claims to specific products.  Patent Owner responded that Petitioner had known about the infringement contentions but did not file them with the Petition.  Patent Owner also disputed the relevance of the contentions because they were preliminary contentions that were “superceded by final infringement contentions, as well as the District Court’s Claim Construction Order.”

The Board agreed with Patent Owner that Petitioner had not established that the contentions were relevant to any claims for which trial was instituted. The only potential relevance identified by the Board is any inconsistency in the contentions with arguments made by Patent Owner in the Preliminary Response.  However, the Board noted that while the arguments may be inconsistent, such inconsistencies would likely not be important.  In this regard, the Board highlighted that “the preliminary infringement contentions were served prior to any substantive discovery in the district court litigation and subsequently supplanted by final infringement contentions, as well as the District Court’s Order Construing Claims.”  The Board also noted that “[i]t is not uncommon for a patent owner to change their scope of claim interpretation during district court litigation, or take one position on claim scope before the Patent Office, because the Board applies the broadest reasonable construction, which may not be the same standard adopted by the district court.”  Finally, the Board stated that a district court’s construction may be informative, but the preliminary contentions “are too tenuous to be relevant” in the Board’s claim construction.

Although Petitioner’s Motion was denied, the Board reminded Petitioner that it could still submit the evidence in its Reply, provided that it is responsive to arguments raised by Patent Owner pursuant to 37 C.F.R. § 42.23(b).

Mentor Graphics Corporation v. Synopsys, Inc., IPR2014-00287
Paper 17:  Order on Petitioner’s Motion to Submit Supplemental Information
Dated: August 1, 2014 
Patent: 6,836,420 B1 
Before: Jennifer S. Bisk, Scott A. Daniels, and Philip J. Hoffmann 
Written by: Daniels
Related Proceeding: Synopsys, Inc. v. Mentor Graphics Corporation, Case No. 3:12-cv-06467-MMC (N.D. Cal.)

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