Synopsys v. Mentor Graphics (IPR2012-00042, Paper 49): An Early Trial Hearing Order

Synopsys, Inc. v. Mentor Graphics Corp., IPR2012-00042, was one of the first inter partes reviews filed under the America Invents Act. Paper 49, entered October 31, 2013, is the Board’s order granting the parties’ requests for an oral hearing. Short as it is, it shows the template the Board used for hearing orders in the early AIA trials.

Background

A party to an IPR is entitled to an oral hearing under 35 U.S.C. § 316(a)(10), and requests one under 37 C.F.R. § 42.70(a). Both Synopsys, the petitioner, and Mentor Graphics, the patent owner, filed requests.

What the Board decided

The Board granted both requests and set the terms:

• Each party had sixty minutes in total. The petitioner would present first, then the patent owner, and each could reserve rebuttal time.
• The hearing was open to the public at the USPTO in Alexandria, Virginia, and the court reporter’s transcript would be the official record.
• Under § 42.70(b) as then in force, demonstrative exhibits had to be served five business days before the hearing. They were to be filed two business days before, and the parties had to arrange a conference call by then to resolve any disputes about them. The order pointed to an earlier Board order (IPR2013-00033, Paper 118) on proper content of demonstratives.
• Lead counsel were expected to attend, though backup counsel could present.

Why it matters

The oral hearing is the only live presentation in an IPR, and it comes near the end of the trial. It is argument, not an evidentiary hearing: new evidence and new arguments are generally not allowed, and demonstratives are aids for argument rather than evidence. Orders like this one fix the time, sequence and logistics. Hearing practice, including deadlines for demonstratives and the use of remote hearings, has changed since 2013, so readers should check current rules and the hearing order in their own case. For a sense of the first AIA hearings, see the first AIA review hearing held at the USPTO.

Later developments

The case is best known for its appeal. In Synopsys, Inc. v. Mentor Graphics Corp. (Fed. Cir. 2016), the Federal Circuit approved the Board’s practice of partial institution, under which the Board could institute review of some challenged claims but not others and issue a final decision only on the instituted claims. The Supreme Court ended that practice in SAS Institute Inc. v. Iancu (2018), holding that if the Board institutes review it must decide the patentability of every claim the petitioner challenged. See PTAB guidance after the SAS decision.

Key takeaways

• The Board granted both parties’ requests for an oral hearing under § 42.70.
• Each side received sixty minutes; the petitioner argued first and either side could reserve rebuttal.
• The order set deadlines for serving and filing demonstratives and for resolving disputes about them.
• The Federal Circuit’s 2016 approval of partial institution in this case was displaced by SAS in 2018.