Banner & Witcoff client Mentor Graphics has prevailed in a Federal Circuit appeal by rival Synopsys, Inc. seeking to overturn the Patent Trial and Appeal Board’s final decision in an inter partes review that upheld challenged claims of Mentor’s U.S. Patent No. 6,240,376. The ‘376 patent at issue relates to software tools used in the prototyping and debugging of digital logic circuits.
The February 10, 2016 decision affirms the Board’s finding that challenged claims 1 and 28 of the ‘376 patent are not anticipated by the prior art as argued by Synopsys. The Federal Circuit also sided with Mentor in rebuking Synopsys’s challenge to the Board’s decision to limit the IPR trial and its final decision to fewer than all of the claims challenged by Synopsys. With this latter holding, “the Court has given its blessing to the Board’s sensible rule and standard practice limiting IPR trial proceedings to those grounds raised in a petition deemed at the institution stage to have a likelihood of prevailing,” said lead counsel Christopher McKee.
The Federal Circuit’s affirmance of the Board’s decision below leaves intact Mentor’s patent claims determined in district court litigation (D. Or.) to be infringed by Synopsys. In October 2014, a jury awarded Mentor over $36 million in damages for Synopsys’s infringement of the ‘376 patent, and Synopsys was permanently enjoined from further infringement.
Banner & Witcoff attorneys Christopher McKee and Michael Cuviello represented Mentor in the IPR and the Federal Circuit appeal. Banner & Witcoff attorney Bradley Wright also represented Mentor in the Federal Circuit appeal. Co-counsel included attorneys from O’Melveny & Myers LLP and Covington & Burling LLP.
For an article reporting Mentor’s previous win in the IPR, click here.