Mentor Graphics Corporation v. Eve-Usa, Inc.
851 F.3d 1275
Fed. Cir.2017Background
- Mentor Graphics sued Synopsys (and EVE, a Synopsys subsidiary) over multiple patents covering hardware-emulation/simulation debugging technology; the ’376 patent was tried to a jury.
- The jury found Synopsys’ ZeBu emulators infringed claims of the ’376 patent and awarded about $36.4 million in lost profits plus royalties.
- District court earlier ruled Synopsys barred by assignor estoppel from challenging the ’376 patent; it also granted summary judgment on several other patent issues: indefiniteness of Synopsys’ ’109 patent, ineligibility of Synopsys’ ’526 patent, lack of written description for Mentor’s ’882 patent, and claim-preclusion barring Mentor’s ’531 and ’176 claims.
- Mentor’s willfulness evidence was excluded by a motion in limine; Mentor cross-appealed that exclusion.
- The Federal Circuit: affirmed infringement verdict, damages, and assignor-estoppel; reversed the ’109 indefiniteness ruling, reversed the ’882 written-description ruling, reversed the claim-preclusion rulings as to the ’531/’176 patents, affirmed invalidity of the ’526 patent under §101, and vacated the willfulness exclusion (remanding for trial on willfulness/enhanced damages).
Issues
| Issue | Mentor's Argument | Synopsys' Argument | Held |
|---|---|---|---|
| Infringement of ’376 (JMOL) | Mentor: ZeBu probe signals create instrumentation signals that “indicate” RTL statements and map to source code | Synopsys: ZeBu only provides block names enabling indirect identification; does not “indicate” RTL statements | Affirmed: substantial evidence supported the jury verdict that ZeBu instrumentation signals indicate RTL statements |
| Assignor estoppel re: ’376 | Mentor: estoppel applies because inventors assigned the patent to Mentor and later joined EVE/Synopsys | Synopsys: Lear undermines estoppel doctrine | Affirmed: assignor estoppel remains valid and bars Synopsys’ challenge |
| Damages — lost profits apportionment | Mentor: Panduit analysis was satisfied for Intel sales; lost profits equal Mentor’s lost emulator sales | Synopsys: must further apportion lost profits to value attributable only to patented features of a multi-feature product | Affirmed: when Panduit is satisfied, apportionment is subsumed; Mentor entitled to lost profits proven by jury |
| ’109 patent indefiniteness (term “near”) | Mentor: “near” is definite in context and examples (figs. 11, 19); conveys physical association of HDL and analysis | Synopsys: “near” is indefinite and ambiguous (cites fig. 30) | Reversed: “near” provides reasonable certainty to skilled artisans; summary judgment of indefiniteness vacated |
| ’526 patent §101 (machine-readable medium incl. carrier waves) | Synopsys: specification includes carrier waves; claims cover transitory carrier signals | Mentor: claims should be read to allow statutory embodiments | Affirmed: because spec expressly defined medium to include carrier waves, claims cover ineligible transitory signals (Nuijten) |
| Willful infringement (motion in limine) | Mentor: may present willfulness based on conduct occurring before Mentor’s counterclaim; Halo allows discretion on enhanced damages | Synopsys: evidence was post-filing; under pre-Halo Seagate logic, must have sought preliminary injunction to preserve post-filing willfulness | Vacated: exclusion was an abuse of discretion; alleged acts were pre-counterclaim (or otherwise properly presented) and Halo eliminates rigid preliminary-injunction prerequisite; remanded for willfulness/ enhanced damages proceedings |
| ’882 patent written description (independent signal routing clock) | Mentor: original specification and original claims show possession of independent routing clocks | Synopsys: spec discloses a frequency relationship (routing clock higher freq) so it does not support an unqualified “independent” clock | Reversed: original claims/specification demonstrate possession; summary judgment of invalidity for lack of written description vacated |
| Claim preclusion re: ’531 and ’176 | Mentor: alleged infringement arose after EVE’s license terminated on Synopsys’ acquisition—claims postdate prior suit | Synopsys: prior litigation and settlement should bar relitigation for same patents/products | Reversed: under Lawlor/Aspex Eyewear/Brain Life, claims based on acts after prior final judgment (or license termination) were not and could not have been litigated earlier; claim preclusion does not bar these post-license infringement claims |
Key Cases Cited
- Pavao v. Pagay, 307 F.3d 915 (9th Cir.) (JMOL standard review)
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (U.S.) (definiteness requires reasonable certainty)
- Lear, Inc. v. Adkins, 395 U.S. 653 (U.S.) (licensee estoppel doctrine abolished)
- Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220 (Fed. Cir.) (assignor estoppel doctrine discussion)
- Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476 (U.S.) (measure of patent damages; "but for" standard)
- Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (6th Cir.) (four-factor test for lost profits)
- In re Nuijten, 500 F.3d 1346 (Fed. Cir.) (transitory signals not patentable subject matter)
- Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (U.S.) (discretionary enhanced damages; no rigid formula)
- Lawlor v. National Screen Service Corp., 349 U.S. 322 (U.S.) (prior judgment cannot extinguish claims that did not then exist)
- Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335 (Fed. Cir.) (post-judgment products: preclusion requires claims that could have been raised earlier)
- Brain Life, LLC v. Elekta Inc., 746 F.3d 1045 (Fed. Cir.) (claim preclusion does not bar infringement allegations confined to post-judgment acts)
- Foster v. Hallco Mfg. Co., 947 F.2d 469 (Fed. Cir.) (prior decisions on scope of preclusion between related product suits)