Synopsys, Inc. v. Mentor Graphics Corporation

Filing 114

ORDER GRANTING IN PART AND DENYING IN PART DEFENDANT'S MOTION TO AMEND INVALIDITY CONTENTIONS. Signed by Judge Maxine M. Chesney on December 13, 2013. (mmclc2, COURT STAFF) (Filed on 12/13/2013)

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1 2 3 4 5 6 7 IN THE UNITED STATES DISTRICT COURT 8 FOR THE NORTHERN DISTRICT OF CALIFORNIA 9 For the Northern District of California United States District Court 10 SYNOPSYS, INC., 11 12 13 No. 12-6467 C MMC Plaintiff, ORDER GRANTING IN PART AND DENYING IN PART DEFENDANT’S MOTION TO AMEND INVALIDITY CONTENTIONS v. MENTOR GRAPHICS CORPORATION, Defendant. 14 / 15 16 Before the Court is defendant Mentor Graphics Corporation’s (“Mentor”) Motion for 17 Leave to Amend Invalidity Contentions, filed October 14, 2013. Plaintiff Synopsys, Inc. 18 (“Synopsys”) has filed opposition, to which Mentor has replied.1 Having read and 19 considered the papers filed in support of and in opposition to the motion, the Court rules as 20 follows.2 BACKGROUND 21 22 23 Synopsys filed the instant patent infringement action on December 21, 2012, alleging Mentor’s products infringe four Synopsys patents: U.S. Patent Nos. 5,748,488 24 1 25 26 27 28 Synopsys’s Administrative Motion for Leave to File Sur-Reply is hereby DENIED. Contrary to Synopsys’s argument, Mentor does not “attempt for the first time to meet its burden of proving diligence in its reply brief” (see Mot. for Sur-Reply 1:6–7; see, e.g., Mot. 1:22-24; 8:15–18; 9:4–15) but, rather, responds to arguments made in Synopsys’s opposition (see Reply 5:24–6:5). Further, the Court’s claim construction order did not in any manner rely on “new arguments pertaining to . . . claim construction issues” contained in the above-referenced reply. (See Mot. for Sur-Reply 1:10.) 2 By order filed November 19, 2013, the Court took the motion under submission. 1 (“‘488 patent”), 5,530,841 (“‘841 patent), and 5,680,318 (“‘318 patent”) (collectively, 2 “Gregory patents”) and U.S. Patent No. 6,836,420 (“Seshadri patent”). The Gregory 3 patents concern the automated design of integrated circuits. (See, e.g., ‘488 patent col. 4 1:36-37.) The Seshadri patent concerns a design for a “resetable memory” for use in such 5 circuits. (See ‘420 patent col. 1:8-10.) 6 Mentor served its original invalidity contentions on June 6, 2013. (See Decl. of John 7 D. Vandenberg (“Vandenberg Decl.) ¶ 2.) As set forth in the Court’s orders, the deadlines 8 for completion of fact and expert discovery are, respectively, May 12, 2014 and July 18, 9 2014. Trial is scheduled to begin on October 27, 2014. 10 11 LEGAL STANDARD Pursuant to the Patent Local Rules of this district, parties may amend their 12 infringement and invalidity contentions “only by order of the Court upon a timely showing of 13 good cause.” See Patent L.R. 3–6; see also Positive Techs., Inc. v. Sony Elecs., Inc., 2013 14 WL 322556 at *2 (N.D. Cal. Jan. 28, 2013) (noting, “[i]n contrast to the more liberal policy 15 for amending pleadings, the philosophy behind amending claim charts is decidedly 16 conservative, and designed to prevent the shifting sands approach to claim construction”) 17 (internal quotation and citation omitted). “Non-exhaustive examples of circumstances that 18 may, absent undue prejudice to the non-moving party, support a finding of good cause 19 include: (a) a claim construction order by the Court different from that proposed by the 20 party seeking amendment; (b) recent discovery of material, prior art despite earlier diligent 21 search; and (c) recent discovery of nonpublic information about the [a]ccused 22 [i]nstrumentality which was not discovered, despite diligent efforts, before the service of the 23 [i]nfringement [c]ontentions.” Patent L.R. 3–6. 24 “‘[G]ood cause’ requires a showing of diligence.” O2 Micro Int’l Ltd. v. Monolithic 25 Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006) (discussing Northern District of 26 California’s Patent Local Rules). “[T]he diligence required for a showing of good cause has 27 two phases: (1) diligence in discovering the basis for amendment; and (2) diligence in 28 2 1 seeking amendment once the basis for amendment has been discovered.” Positive Techs., 2 2013 WL 322556 at *2. 3 The moving party bears the burden of establishing diligence. See O2 Micro, 467 4 F.3d at 1366. Where the moving party is unable to show diligence, there is “no need to 5 consider the question of prejudice,” see id. at 1368, although a court in its discretion may 6 elect to do so, see, e.g., Dynetix Design Solutions Inc. v. Synopsys Inc., 2012 WL 6019898 7 at *1 (N.D. Cal. Dec. 3, 2012). DISCUSSION 8 9 By the instant motion, Mentor seeks leave to make five amendments to its invalidity 10 contentions, which amendments, Mentor argues, are supported by a showing of good 11 cause. In response, Synopsys argues Mentor has failed to make the requisite showing of 12 diligence as, according to Synopsys, Mentor was in possession of all of the information it 13 needed long before it served its original invalidity contentions. Additionally, Synopsys 14 contends it would be prejudiced if the proposed amendments were allowed. The Court 15 next addresses the proposed amendments in the order they are discussed in Mentor’s 16 motion. 17 Mentor’s first proposed amendment seeks to correct “errors” in its contentions as to 18 nonstatutory double patenting, which errors Mentor states it first noticed while preparing its 19 response to an interrogatory. (See Mot. 7:2–3.) Mentor does not explain why said “errors” 20 could not have been discovered prior to its preparation of the above-referenced 21 interrogatory response. Rather, citing OpenDNS, Inc. v. Select Notifications Media, LLC, 22 2013 WL 2422623 (N.D. Cal. 2013), Mentor argues that an “honest mistake” itself is 23 sufficient grounds for amendment. (See Reply 3:19–23); OpenDNS, 2013 WL 2422623 at 24 *3. As the district court in OpenDNS explained, however, “[m]istakes or omissions are not 25 by themselves good cause.” Although the court did allow the amendment therein 26 requested, it did so because the amendment did “not appear to change the infringement 27 theory,” and the error, which, in the court’s view, “appear[ed] to be an administrative 28 3 1 mistake,” concededly was “obvious” to the other party. See OpenDNS, 2013 WL 2422623 2 at *1, *3. Here, by contrast, the claimed errors are not merely “administrative” in nature. 3 See id. at *3. Rather, Mentor seeks to add to its invalidity contentions a number of prior art 4 references, upon which Mentor, by its first proposed amendment, now seeks to rely. (See 5 Decl. of Andrew M. Mason (“Mason Decl.”) Ex. C at 5, 7, 9, 14; id. Ex. D. at 4.) Indeed, 6 although, as Mentor points out, it is “challenging the same claims” (see Mot. 2:22–23), the 7 amendment constitutes “modified grounds” for doing so (see id.). Further, the instant 8 motion was filed shortly before the scheduled claim construction hearing, by which time the 9 parties had made their respective choices of claims to be construed. See Patent L.R. 10 4–3(c) (requiring parties to identify for purposes of claim construction hearing “a maximum 11 of 10” terms “whose construction will be most significant to the resolution of the case”). 12 Under such circumstances, the likelihood of prejudice to Synopsys weighs against the 13 proposed amendment. See, e.g., Dynetex, 2012 WL 6019898 at *3 (denying request to 14 amend infringement contentions; finding “proposed amendment would leave [opposing 15 party] prejudiced by its previous claim term choices”).3 Accordingly, the Court finds Mentor 16 has not shown good cause for its first proposed amendment. 17 Mentor’s second and third proposed amendments seek, respectively, (1) to assert, 18 as an additional ground for its contention that the Gregory patents are invalid for 19 anticipation, an effective filing date in 1995, five years later than the date on which 20 Synopsys relies; and (2) to assert as additional grounds for its contention that the patents- 21 in-suit fail to provide the requisite information for enablement and written description, see 22 35 U.S.C. § 112(a), that the Gregory patents’ specifications contain no “example using the 23 VHDL or Verilog language” (see Vandenberg Decl. Ex. C at 20) and that the Seshadri 24 patent’s claims are broader than the described embodiments. In an effort to demonstrate 25 3 26 27 28 To the extent Mentor suggests it need not have good cause to make the proposed changes to its contentions because Patent Local Rule 3–3, which governs the content of invalidity contentions, does not expressly reference nonstatutory double patenting, see Patent L.R. 3–3, the Court disagrees. Patent Local Rule 3–6, which governs amendment of contentions, expressly requires a “timely showing of good cause.” See Patent L.R. 3–6. 4 1 diligence, Mentor argues it discovered the basis for both such amendments during its 2 September 11, 2013 deposition of Donald E. Thomas, Jr., Ph.D., Synopsys’s expert for 3 purposes of claim construction, wherein Thomas testified, based on an examination of the 4 Gregory patents, that none contains “any example of VHDL language” or “any example of 5 Verilog language.” (See id. Ex. B 27:17–23.) The Court is not persuaded. First, the cited 6 testimony has no bearing on the Seshadri patent, which is not referenced therein. As to 7 the Gregory patents, Mentor’s reliance on said testimony likewise is unavailing, as Mentor 8 does not explain why, with the assistance of its own expert, Mentor itself could not have 9 made the same observation independently and prior to both the filing of its invalidity 10 contentions and the parties’ selection of claim terms.4 Accordingly, the Court finds Mentor 11 has not shown good cause for its second and third proposed amendments. 12 Mentor’s fourth proposed amendment seeks, as to dependent claim 20 of the 13 Seshadri patent, to conform its invalidity contentions to those it has already made as to 14 dependent claims 12–16 and independent claim 11, from which said six later claims all 15 depend. Although Mentor offers no explanation as to why such contention was not made 16 earlier, the Court agrees with Mentor that the proposed amendment “should neither 17 surprise nor prejudice [Synopsys].” See OpenDNS, 2013 WL 2422623 at *1, *3 (allowing 18 amendment in absence of diligence where mistake was “obvious” and essentially clerical in 19 nature). Accordingly, the Court finds Mentor has shown good cause for its fourth proposed 20 amendment. 21 Mentor’s fifth proposed amendment seeks, as to claim 36 of the ‘318 patent, to add 22 indefiniteness as a new ground of invalidity, based on what Mentor asserts is a lack of an 23 antecedent basis for the term “said synchronous assignment condition.” (See Mot. Ex. 1 at 24 61:6–7.) Mentor does not explain why said assertion was not made in its original 25 26 27 28 4 To the extent Mentor, again citing Patent Local Rule 3–3, suggests no showing as to good cause is necessary because effective filing dates are not referenced therein, the Court, for the reasons set forth above with respect to the first proposed amendment, disagrees. 5 1 contentions. Further, and contrary to Mentor’s argument, the fact that “neither party has 2 raised the issue of claim correction with the Court” (see Mot. 10:20) does not suggest a 3 lack of prejudice. Claim correction bears significantly on claim construction. See CBT Flint 4 Partners, LLC v. Return Path, Inc., 654 F.3d 1353, 1358–59 (Fed. Cir. 2011) (holding court 5 “must consider how a potential correction would impact the scope of a claim”). As noted 6 above, claim construction has already occurred in the instant action. Had Mentor included 7 its proposed amendment prior to that proceeding, Synopsys likely would have sought to 8 correct the asserted error as part of claim construction. See Dynetex, 2012 WL 6019898 at 9 *3 (finding “proposed amendment would leave [opposing party] prejudiced by its previous 10 claim term choices”). Accordingly, the Court finds Mentor has not shown good cause for its 11 fifth proposed amendment. CONCLUSION 12 13 14 Mentor’s Motion for Leave to Amend Invalidity Contentions is hereby GRANTED in part and DENIED in part, as follows: 15 a. With respect to the fourth proposed amendment, the motion is GRANTED; 16 b. In all other respects, the motion is DENIED. 17 IT IS SO ORDERED. 18 Dated: December 13, 2013 MAXINE M. CHESNEY United States District Judge 19 20 21 22 23 24 25 26 27 28 6

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