Intellectual Property Law: Counseling, Licensing, Litigation & Procurement

 RSS Feeds |  Blogs |  |

Synopsys Inc. v. Mentor Graphics Corp.

Synopsys Inc. v. Mentor Graphics Corp. No. IPR 2012-00042, at the USPTO Patent Trial and Appeal Board.

On Feb. 19, 2014, following a full inter partes review trial, the PTAB ruled in favor of firm client Mentor Graphics, finding that nine out of 12 of the challenged claims relating to prototyping circuits had not been proven unpatentable. The final written decision marked the first time the USPTO upheld the bulk of the patent claims challenged in an instituted IPR since the America Invents Act proceeding took effect in September 2012.

The decision followed on the heels of the firm’s success in having a Synopsys petition for IPR of another patent involved in the litigation denied in its entirety (in IPR 2012-00041) nearly one year prior. The Federal Circuit affirmed the PTAB’s decision on Feb. 10, 2016, finding challenged claims of the ‘376 patent not anticipated by the prior art as argued by Synopsys. The Federal Circuit also sided with Mentor in rebuking Synopsys’ challenge to the PTAB’s decision to limit the IPR trial and its final decision to fewer than all of the claims challenged by Synopsys.

The Federal Circuit’s affirmance of the PTAB’s decision 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’ infringement of the ‘376 patent, and Synopsys was permanently enjoined from further infringement.

Banner & Witcoff attorneys Christopher L. McKee and Michael S. Cuviello represented Mentor Graphics in these matters.

Click here to return to the firm’s list of representative IPR matters.