Mentor Graphics Corporation v. EVE-USA, Inc. et al

Filing 524

OPINION AND ORDER: Synopsyss Motion for Partial Summary Judgment 371 is GRANTED. Claim preclusion bars Mentor Graphicss counterclaims 382 to the extent that they allege infringement of U.S. Patent Nos. 6,009,531 and 5,649,176. Signed on 6/4/14 by Judge Michael W. Mosman. Associated Cases: 3:10-cv-00954-MO, 3:12-cv-01500-MO, 3:13-cv-00579-MO (dls)

UNITED STATES DISTRICT COURT
DISTRICT OF OREGON
PORTLAND DIVISION

MENTOR GRAPHICS CORPORATION,
an Oregon Corporation,
Plaintiff/Counter-defendant,

Case No. 3:10-cv-954-MO (lead)
Case No. 3:12-cv-1500-MO
Case No. 3:13-cv-579-MO

v.
OPINION AND ORDER
EVE-USA, INC., a Delaware corporation; and
SYNOPSYS EMULATION AND
VERIFICATION S.A., formed under the laws
of France,
Defendants/Counter-claimants.
EVE-USA, INC., a Delaware corporation; and
SYNOPSYS EMULATION AND
VERIFICATION S.A., formed under the laws
of France,
Plaintiffs/Counter-defendants
v.
MENTOR GRAPHICS CORPORATION,
an Oregon corporation,
Defendant/Counter-claimant.

1 – OPINION AND ORDER

MOSMAN, J.,
EVE-USA, Inc., and Synopsys Emulation and Verification S.A. (collectively,
“Synopsys”) move for partial summary judgment on Mentor Graphics Corporation’s (“Mentor
Graphics”) counterclaims in case no. 13-579 on grounds of claim preclusion. (Mot. [371] at 2.)1
I took the motion under advisement [416] after hearing oral argument on September 24, 2013.
On March 5, 2014, I ordered [482] supplemental briefing on the question whether the ZeBu
emulators at issue in Mentor Graphics’s counterclaims are “essentially the same” as those it
accused of patent infringement in a 2006 action against EVE-USA, Inc. Mentor Graphics’s
supplemental brief also raises the issue of whether, in light of recent Federal Circuit opinions, the
claim preclusion inquiry no longer turns on whether the presently and formerly accused products
are “essentially the same.” (Supp. Opp. [490] at 2–4.) I now GRANT Synopsys’s motion.
For at least two decades, the Federal Circuit has held that judgment on a claim of
infringement against a product bars a later infringement claim against a different product if the
two products are “essentially the same.” Nystrom v. Trex Co., Inc., 580 F.3d 1281, 1285 (Fed.
Cir. 2009); Roche Palo Alto LLC v. Apotex, Inc., 531 F.3d 1372, 1379 (Fed. Cir. 2008); Foster v.
Hallco Mfg. Co., Inc., 947 F.2d 469, 479–80 (Fed. Cir. 1991). By contrast, in two recent, threejudge panel opinions, the court has held that claim preclusion does not bar an infringement claim
against a product that did not exist as of the prior judgment, “essentially the same” or not. Brain
Life, LLC v. Elekta Inc., 746 F.3d 1045, 1054 (Fed. Cir. 2014); Aspex Eyewear, Inc. v. Marchon
Eyewear, Inc., 672 F.3d 1335, 1342 (Fed. Cir. 2012). Synopsys correctly observes that the
Foster line of cases cannot be reconciled with Aspex and Brain Life. (Supp. Resp. [502] at 2–3.)
Because one three-judge panel cannot overrule another, Newell Cos., Inc. v. Kenny Mfg. Co., 864
F.2d 757, 765 (Fed. Cir. 1988), Foster controls until the Federal Circuit sitting en banc says
1

All docket numbers refer to the lead case, no. 10-954.

2 – OPINION AND ORDER

otherwise. Mentor Graphics’s counterclaims are barred if they accuse products that are
“essentially the same” as those accused in the 2006 action.
The evidence that the parties have presented permits only one conclusion: the presently
and formerly accused ZeBu emulators are “essentially the same.” Mentor Graphics identifies
only two new features of the modern emulators: a user-friendly software tool for generating
“transactors” called ZEMI-3 and a device allowing multiple ZeBu units to function as a single
emulator called Fast Internal Bus. (Supp. Opp. [490] at 6–9.) Synopsys correctly observes that
neither of these features materially alters the manner in which the newer ZeBu emulators
allegedly practice Mentor Graphics’s patents. (Supp. Resp. [502] at 6–9.)
Synopsys’s Motion for Partial Summary Judgment [371] is GRANTED. Claim
preclusion bars Mentor Graphics’s counterclaims [382] to the extent that they allege
infringement of U.S. Patent Nos. 6,009,531 and 5,649,176.
IT IS SO ORDERED.
DATED this

4th

day of June, 2014.

/s/ Michael W. Mosman
MICHAEL W. MOSMAN
United States District Judge

3 – OPINION AND ORDER