Synopsys, Inc.v.Mentor Graphics Corporation

Patent Trials and Appeals Board

May 2, 2013

09404920 - (R) (P.T.A.B. May. 2, 2013)

Trials@uspto.gov Paper 21
Tel: 571-272-7822 Entered: May 2, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
SYNOPSYS, INC.
Petitioner
v.
MENTOR GRAPHICS CORPORATION
Patent Owner
_______________

Case IPR2012-00041
Patent 6,947,882 B1
_______________

Before SALLY C. MEDLEY, HOWARD B. BLANKENSHIP, and
JENNIFER S. BISK, Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION
Request for Rehearing
37 C.F.R. § 42.71(d)

Case IPR2012-00041
Patent 6,947,882 B1

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I. INTRODUCTION
Petitioner Synopsys, Inc. requests rehearing (Paper 20, “Rehearing Req.”) of
the Decision mailed February 22, 2013 (Paper 16, “Decision”) denying Petitioner’s
request for inter partes review of claims 1-14 and 17-20 of U.S. Patent 6,947,882
(the “’882 patent”) (Ex. 1001). The request for rehearing is denied.
II. BACKGROUND
Petitioner sought inter partes review of claims 1-14 and 17-20 of the ’882
patent on September 26, 2012. Paper 1 (“Pet.”). The ’882 patent is directed to a
regionally time multiplexed system for emulating a circuit design. For a fuller
description of the technology of the ’882 patent, see Decision 3-4. The Petitioner
challenged the enumerated claims as anticipated or obvious over several
references, alone and in combination. See Pet. 4-5. In its Decision, the Board
determined that Petitioner had failed to establish a reasonable likelihood of
prevailing over any of the proposed grounds, and therefore denied the petition.
Decision 18. Petitioner now seeks reconsideration of that denial on the ground that
claims 1-14 and 17-20 are anticipated by U.S. Patent 5,960,191 (the “’191 patent”)
(Ex. 1002).
III. ANALYSIS
A. Claim Construction
Petitioner’s main argument is that in construing the claim term
“independent,” the Board failed to apply the “broadest reasonable interpretation.”
Rehearing Req. 2-8. We do not agree.
Before moving on to the merits of this argument, we point out that Petitioner
did not set forth an explicit proposed interpretation for the claim term
“independent” (or any other claim term) in the petition and therefore cannot
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identify where this matter was addressed in the petition. We could not have
misapprehended or overlooked something not adequately explained in the initial
petition. A request for rehearing is not an opportunity to supplement the initial
petition. Regardless, we are not persuaded that our Decision was incorrect.
In our Decision, we construed the claim terms “wherein clocking of the
second time multiplexed interconnection is independent of clocking of the first
time multiplexed interconnection” as required by independent claim 1 and
“wherein the signal routing clock signal is independent of the first clock signal and
the second clock signal” as required by independent claim 5 (collectively, “the
independent clock signal limitation”). Decision 5-7. Petitioner implicitly
proposed that the interpretation of this term includes signals that are described as
“asynchronous.” See Discussion in Decision 5-7; Pet. 17, 25. We disagreed,
finding that the plain and ordinary meaning of “independent” is not synonymous
with “asynchronous.” Decision 6.
In its motion for rehearing, Petitioner appears to propose that in the context
of the ’882 patent, the independent clock signal limitation should be construed to
mean that “there is no required relationship between [the] two clock signals.” See
Rehearing Req. 6. However, there are many types of relationships between signals
other than being synchronous. Thus, a description of two signals as asynchronous
does not mean that the signals have no relationship. Because Petitioner’s proposed
definition is not synonymous with asynchronous clock signals, we are not
persuaded that, even if we adopted this construction, the outcome of our Decision
would be different.
B. Anticipation
Petitioner’s “Detailed Explanation” of the asserted grounds for anticipation
of the challenged claims by the ’191 patent consisted solely of a claim chart. Pet.
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14. Thus, the Board had no analysis or explanation to accompany the quoted
language from the ’191 patent with which to determine whether Petitioner had met
the threshold burden required by 35 U.S.C. § 314(a)—“that there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the claims
challenged in the petition.” Decision 10. In the Decision, we explained that
because Petitioner did not specify that any element of the claims is included
inherently in the ’191 patent, we must assume that the ’191 patent explicitly
discloses each and every limitation of all the challenged claims arranged as in the
claim. Id.
The only language of the ’191 patent relied on by Petitioner, and thus the
only basis on which to determine whether Petitioner would prevail with respect to
the independent clock signal limitation, are two paragraphs in the ’191 patent and
one sentence in Chen (Ex. 1003). Decision 10-12; Pet. 17, 25. None of this
language, however, explicitly satisfies all the requirements of the limitation even if
we use Petitioner’s newly proposed definition—“no required relationship between
the signals.” Two of the sections merely disclose that the signals “need not be
synchronized between any two chips” or “are assumed asynchronous.” Pet. 17, 25
(citing ’191 patent, col. 11, ll. 40-50; Chen, col 8, ll. 18-19). As explained above,
two signals being asynchronous does not preclude another type of relationship
between the same two signals. Therefore, these passages do not even satisfy
Petitioner’s proposed interpretation of the independent clock signal limitation.
The last passage of the ’191 patent relied on by Petitioner discloses using
“different pairs of emulation boards 200 to have different clocks.” Pet 17, 25.
And, while we explained that this may indeed disclose independent clocking, it
does not disclose explicitly that the independent clocks are for the first and second
“time multiplexed interconnection” as required by claim 1, or that the two signals
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are “at least one of the first input/output circuitry and the second input/output
circuitry” as required by claim 5. Decision 11-12. Thus, no matter what
interpretation of the independent clock signal limitation we adopt, the passages
relied upon by Petitioner do not disclose explicitly each of the elements arranged
as in the claim as required to prove anticipation. We are not persuaded by
Petitioner’s arguments to the contrary. Rehearing Req. 9-12. We also note that
these arguments refer to and explain many sections of the ’191 patent not
mentioned in the petition. See, e.g., Rehearing Req. 10-11 (citing ’191 patent col.
11, l. 22-col. 14, l. 5, Figs. 8-10). Again, we could not have misapprehended or
overlooked something not adequately explained initially. Moreover, a request for
rehearing is not an opportunity to supplement a petition.
Finally, we are not persuaded by Petitioner’s argument that the conclusion of
our Decision was flawed because “if the disclosure of the ’191 patent is viewed in
the same light as the ’882 patent, it likewise clearly discloses separate sources for
[its] clock signals” and therefore the ’191 patent anticipates the independent clock
signal limitation. Rehearing Req. 15. First, as explained above, we are not
persuaded that the cited language discloses the elements arranged as in the claims
even if the independent clock signal limitation were satisfied. Second, Petitioner’s
extensive comparison of the specifications of the ’882 and the ’191 patents is
irrelevant. See Rehearing Req. 12-15. The only proper comparison in this
anticipation challenge is between the language of the ’191 patent relied upon by
the Petitioner and the subject matter of the challenged claims. In re Morsa, 2013
WL 1352514, at *5 (Fed. Cir. Apr. 5, 2013) (“[T]he anticipation exercise must
assess the . . . prior art reference in light of the proposed claims.”).
As explained in our Decision, and discussed above, after such comparison,
we conclude that Petitioner has not shown that there is a reasonable likelihood that
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it would prevail with respect to at least 1 of the claims challenged in the petition.
III. CONCLUSION
Petitioner has not carried its burden of demonstrating that the Board’s
Decision misapprehended or overlooked any matters. 37 C.F.R. § 42.71(d). The
Motion is DENIED.

For Petitioner:
William Wright
wwright@orrick.com

Travis Jensen
tjensen@orrick.com

For Patent Owner:
Christopher McKee
mentoripr@bannerwitcoff.com

Michael Cuviello
mentoripr@bannerwitcoff.com