Synopsys, Inc. v. Mentor Graphics Corporation

Filing 446

STIPULATED MOTION AND ORDER FOR ENTRY OF FINAL JUDGMENT AS TO COUNTS 1-3 OF THE COMPLAINT AND STAY OF ACTION AS TO COUNT 4 Final judgment is entered under as to Counts 1-3 of the Complaint, adjudicating the eight asserted claims of United Stat es Patent Nos. 5,530,841, 5,680,318, and 5,748,488. The action as to Count 4 (United States Patent No. 6,836,420) is further stayed pending the resolution of the inter partes review of the 420 patent, including any appealtherefrom, and of any appeal of the Section 101 Order on Counts 1-3. Signed by Judge Maxine M. Chesney on April 20, 2015. (mmclc2, COURT STAFF) (Filed on 4/20/2015)

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David T. Pritikin (Pro Hac Vice)
[e-mail]
SIDLEY AUSTIN LLP
1 South Dearborn Street
Chicago, IL 60603
Telephone: [phone]
Facsimile: [phone]
M. Patricia Thayer (SBN 90818)
[e-mail]
Philip W. Woo (SBN 196459)
[e-mail]
SIDLEY AUSTIN LLP
555 California Street, Suite 2000
San Francisco, CA 94104
Telephone: [phone]
Facsimile: [phone]
I. Neel Chatterjee (SBN 173985)
[e-mail]
ORRICK, HERRINGTON & SUTCLIFFE LLP
1000 Marsh Road
Menlo Park, CA 94025
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff
SYNOPSYS, INC.

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George A. Riley (SBN 118304)
[e-mail]
Mark E. Miller (SBN 130200)
[e-mail]
Luann L. Simmons (SBN 203526)
[e-mail]
Michael Sapoznikow (SBN 242640)
[e-mail]
O’MELVENY & MYERS LLP
Two Embarcadero Center, 28th Floor
San Francisco, CA 94111
Telephone:
[phone]
Facsimile:
[phone]
Kristin L. Cleveland (SBN 184639)
[e-mail]
Salumeh R. Loesch (Pro Hac Vice)
[e-mail]
Jeffrey S. Love (SBN 195068)
[e-mail]
Andrew M. Mason (Pro Hac Vice)
[e-mail]
John D. Vandenberg (Pro Hac Vice)
[e-mail]
KLARQUIST SPARKMAN, LLP
121 S.W. Salmon Street, Suite 1600
Portland, OR 97204
Telephone:
[phone]
Facsimile:
[phone]
Attorneys for Defendant
MENTOR GRAPHICS CORPORATION

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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA - SAN FRANCISCO DIVISION
SYNOPSYS, INC., a Delaware Corporation

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Plaintiff,
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v.
MENTOR GRAPHICS CORPORATION, an
Oregon Corporation,

Case No. 3:12-cv-06467-MMC
STIPULATED MOTION AND
[PROPOSED] ORDER FOR ENTRY
OF FINAL JUDGMENT AS TO
COUNTS 1-3 OF THE COMPLAINT
AND STAY OF ACTION AS TO
COUNT 4

Defendant.

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STIPULATION AND [PROPOSED] ORDER FOR ENTRY OF FINAL
JUDGMENT AS TO COUNTS 1-3 OF THE COMPLAINT AND STAY OF
ACTION AS TO COUNT 4
CASE NO. 3:12-CV-06467-MMC

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Plaintiff Synopsys, Inc. (“Synopsys”) and Defendant Mentor Graphics Corporation

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(“Mentor”) jointly submit this stipulated motion seeking the following relief from the Court,

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accompanied by a proposed order:

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1.

Entry of a final judgment under Federal Rule of Civil Procedure 54(b), as to Counts

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1-3 of the Complaint, adjudicating the eight asserted claims of United States Patent Nos. 5,530,841,

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5,680,318, and 5,748,488 (collectively, the “Gregory Patents”) invalid under Section 101 of the

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Patent Act, reserving Synopsys’ right to appeal from such judgment; and

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2.

An order further staying the action as to Count 4 (United States Patent No.

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6,836,420) pending the resolution of the inter partes review of the ’420 patent, see Dkt. No. 215,

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including any appeal therefrom, and of any appeal of the Order on Motions for Summary Judgment,

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Dkt. No. 442 (“Section 101 Order”).

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Synopsys and Mentor respectfully submit that the requested relief is properly based on the
following:

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1.

Synopsys’ Complaint in this action includes four counts. Dkt. No. 1. Counts 1-3

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relate to Synopsys’ infringement allegations for the Gregory Patents. Id. at 3-7. Count 4 relates to

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Synopsys’ infringement allegations for the ’420 patent. Id. at 7-8. Mentor has not asserted any

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counterclaims in this action. Dkt. No. 43.

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2.

The Court granted summary judgment finding all asserted claims of the Gregory

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Patents invalid under 35 U.S.C. § 101. Section 101 Order at 11. As a result, there is currently

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nothing left to be determined on Counts 1-3 of the Complaint. Synopsys intends to appeal the

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Section 101 Order.

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3.

The Court previously, on August 1, 2014, stayed all proceedings regarding Count 4

pending inter partes review of the ’420 patent. Dkt. No. 215.

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4.

Because the proceedings for the only remaining claim in this action are stayed, all

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deadlines have been vacated (except for a periodic joint status report regarding the stay). Dkt. No.

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444.

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5.

The three Gregory Patents that are the subject of Counts 1-3 share the same

STIPULATION AND [PROPOSED] ORDER FOR ENTRY OF FINAL
JUDGMENT AS TO COUNTS 1-3 OF THE COMPLAINT AND STAY OF
ACTION AS TO COUNT 4
CASE NO. 3:12-CV-06467-MMC

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inventors, specification, and priority date. Two of the Gregory Patents have already expired, and
the remaining patent will expire within the next month.
6.

The ’420 patent, on the other hand, has different inventors, a different specification,

and a different priority date than the Gregory Patents. The ’420 patent and the Gregory Patents
have no overlapping construed claimed terms. See Dkt. No. 100. Further, the ’420 patent was
acquired by Synopsys when it acquired Synplicity, Inc., whereas Synopsys was the original
assignee of the Gregory Patents. The ’420 patent is also currently subject to an inter partes review
before the Patent Trial and Appeal Board. The Board has not yet issued a final written decision
regarding the ’420 patent. Once the Board issues a final written decision, either party may appeal
that decision to the Federal Circuit. 35 U.S.C. § 141(c).
7.

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The parties have agreed to the following:
a. Neither party will raise any argument or issue regarding the ’420 patent in

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any appeal of the Section 101 Order;

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b.

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the Section 101 Order and any appeal of the inter partes review of the ’420

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patent are resolved; and

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c. Until any appeal of the Section 101 Order is complete and the Federal Circuit

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issues its mandate, Synopsys shall not bring any new action or allegation that

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any Mentor’s actions, products, or software, or any use of Mentor’s products

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The stay regarding the ’420 patent should continue until both the appeal of

or software, infringe, directly or indirectly, the ’420 patent.
8.

Under Federal Rule of Civil Procedure 54(b), “the court may direct entry of a final

judgment as to one or more, but fewer than all, claims . . . if the court expressly determines that
there is no just reason for delay.” In patent cases, Federal Circuit law applies to Rule 54(b)
certification issues. Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 829 (Fed. Cir. 2003).
Rule 54(b) certification is proper where there is: (1) a final judgment, and (2) the district court
determines that there is no just reason for delay of entry. Curtiss-Wright Corp. v. General Elec.
Co., 446 U.S. 1, 7-8 (1980); see also W.L. Gore Assocs., Inc. v. Int'l Med. Prosthetics Research
STIPULATION AND [PROPOSED] ORDER FOR ENTRY OF FINAL
JUDGMENT AS TO COUNTS 1-3 OF THE COMPLAINT AND STAY OF
ACTION AS TO COUNT 4
CASE NO. 3:12-CV-06467-MMC

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Assocs., Inc., 975 F.2d 858, 861-62 (Fed. Cir. 1992). A final judgment is “a decision upon a
cognizable claim for relief” and that is “an ultimate disposition of an individual claim entered in
the course of a multiple claims action.” Curtiss-Wright, 446 U.S. at 7 (citing Sears, Roebuck & Co.
v. Mackey, 351 U.S. 427, 436 (1956)).

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disposes of the claims asserting the Gregory Patents. The parties further agree that there is no just
reason for delay of entry of a final judgment of invalidity with regard to the Gregory Patents.

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The parties agree that the judgment with respect to the Gregory Patents is final and

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The Section 101 Order left nothing to be determined on Synopsys’ claims of

infringement of the Gregory Patents under Counts 1-3. All proceedings on Count 4 regarding the
’420 patent are stayed. In light of these facts, the differences between the Gregory Patents and the
’420 patent, and the parties' agreements, there is no just reason for delay in any appeal of the Section
101 Order. These circumstances justify immediate appeal of the Section 101 Order, and “departure
from the general rule that all issues decided by the district court should be resolved in a single
appeal of a final judgment.” See iLOR, LLC v. Google, Inc., 550 F.3d 1067, 1072-73 (Fed. Cir.
2008).

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IT IS SO STIPULATED.

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Dated: April 17, 2015

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By: s/M. Patricia Thayer
M. Patricia Thayer
Attorneys for Plaintiff
SYNOPSYS, INC.

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Dated: April 17, 2015

By: s/John D. Vandenberg
John D. Vandenberg
Attorneys for Defendant
MENTOR GRAPHICS CORPORATION

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STIPULATION AND [PROPOSED] ORDER FOR ENTRY OF FINAL
JUDGMENT AS TO COUNTS 1-3 OF THE COMPLAINT AND STAY OF
ACTION AS TO COUNT 4
CASE NO. 3:12-CV-06467-MMC

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Pursuant to Civil Local Rule 5-1(i)(3), counsel for Mentor Graphics has obtained the
concurrence of Plaintiff’s counsel in the filing of this stipulated request.

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Dated: April 17, 2015

By: s/John D. Vandenberg

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STIPULATION AND [PROPOSED] ORDER FOR ENTRY OF FINAL
JUDGMENT AS TO COUNTS 1-3 OF THE COMPLAINT AND STAY OF
ACTION AS TO COUNT 4
CASE NO. 3:12-CV-06467-MMC

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PURSUANT TO STIPULATION, IT IS SO ORDERED.
1.

Final judgment is hereby entered under Federal Rule of Civil Procedure 54(b), as to

Counts 1-3 of the Complaint, adjudicating the eight asserted claims of United States Patent Nos.
5,530,841, 5,680,318, and 5,748,488 (collectively, the “Gregory Patents”) invalid under Section
101 of the Patent Act, reserving Synopsys’ right to appeal from such judgment. For the reasons set
forth in the parties’ stipulated motion, there is no just reason for delay in any appeal on these counts.
2.

Furthermore, the action as to Count 4 (United States Patent No. 6,836,420) is further

stayed pending the resolution of the inter partes review of the ’420 patent, including any appeal
therefrom, and of any appeal of the Section 101 Order on Counts 1-3.

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DATED: April 20, 2015
Honorable Maxine M. Chesney
United States District Judge

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STIPULATION AND [PROPOSED] ORDER FOR ENTRY OF FINAL
JUDGMENT AS TO COUNTS 1-3 OF THE COMPLAINT AND STAY OF
ACTION AS TO COUNT 4
CASE NO. 3:12-CV-06467-MMC

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