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Mentor Graphics Corp. v. EVE-USA, Inc.

United States Court of Appeals for the Federal Circuit

March 16, 2017, Decided

2015-1470, 2015-1554, 2015-1556

Opinion

 [*1280]  [***1123]   Moore, Circuit Judge.

The present appeal arises from litigation in the District of Oregon between Mentor Graphics Corp. ("Mentor") and Synopsys, Inc., [**2]  Synopsys Emulation and Verification S.A.S., and EVE-USA, Inc. ("EVE") (collectively, "Synopsys").1 Mentor asserted several patents against Synopsys, including U.S. Patent Nos. 6,240,376 ("the '376 patent"), 6,947,882 ("the '882 patent"), 6,009,531 ("the '531 patent"), and 5,649,176 ("the '176 patent"). Synopsys asserted two patents against Mentor—U.S. Patent Nos. 6,132,109 ("the '109 patent") and 7,069,526 ("the '526 patent").

The '376 patent was the only patent tried to the jury. Prior to trial, the district court granted summary judgment barring Synopsys from challenging the '376 patent's validity because of assignor estoppel. It also granted Synopsys' motion in limine precluding Mentor from introducing evidence of willful infringement. The jury found in favor of Mentor and found damages of approximately $36,000,000. Synopsys appeals the infringement verdict, the damages award, and the summary judgment of assignor estoppel. Mentor cross-appeals the motion in limine regarding willfulness.

The district court granted summary judgment on the remaining patents prior to trial. It held that Synopsys' '109 patent was indefinite and Synopsys' '526 patent lacked patent-eligible subject matter. Synopsys appeals both decisions. The district court also held that the claims of Mentor's '882 patent lacked written description support and its infringement allegations relating to the '531 and '176 patents were barred by claim preclusion. Mentor cross-appeals both decisions. [**3] 

We hold there was substantial evidence to support the jury's infringement verdict regarding the '376 patent and affirm the district court's denial of judgment as a matter of law. We affirm the damages award. We affirm the summary judgment that assignor estoppel bars Synopsys from challenging the validity of the '376 patent. We reverse the summary judgment that Synopsys' '109 patent is indefinite. We affirm the summary judgment that Synopsys' '526 patent lacks patent-eligible subject matter. We vacate the motion in limine precluding Mentor from presenting evidence of willful infringement. We reverse the summary judgment that Mentor's '882 patent lacks written description support. Finally, we reverse the summary judgment that Mentor's infringement allegations regarding the '531 and '176 patents are barred by claim preclusion.

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851 F.3d 1275 *; 2017 U.S. App. LEXIS 4595 **; 122 U.S.P.Q.2D (BNA) 1120 ***; 2017 WL 1024502

MENTOR GRAPHICS CORPORATION, AN OREGON CORPORATION, Plaintiff-Cross-Appellant v. EVE-USA, INC., A DELAWARE CORPORATION, SYNOPSYS EMULATION AND VERIFICATION S.A.S., FORMED UNDER THE LAWS OF FRANCE, SYNOPSYS, INC., A DELAWARE CORPORATION, Defendants-Appellants

Subsequent History: Rehearing, en banc, denied by, Rehearing denied by Mentor Graphics Corp. v. EVE-USA, Inc., 870 F.3d 1298, 2017 U.S. App. LEXIS 16854 (Fed. Cir., Sept. 1, 2017)

Later proceeding at EVE-USA, Inc. v. Mentor Graphics Corp., 138 S. Ct. 1608, 200 L. Ed. 2d 775, 2018 U.S. LEXIS 2511 (U.S., Apr. 23, 2018)

US Supreme Court certiorari dismissed by EVE-USA, Inc. v. Mentor Graphics Corp., 2018 U.S. LEXIS 4165 (U.S., Aug. 17, 2018)

Prior History:  [**1] Appeals from the United States District Court for the District of Oregon in Nos. 3:10-cv-00954-MO, 3:12-cv-01500-MO, 3:13-cv-00579-MO, Judge Michael W. Mosman.

Mentor Graphics Corp. v. EVE-USA, Inc., 2015 U.S. Dist. LEXIS 29720 (D. Or., Mar. 11, 2015)Mentor Graphics Corp. v. EVE-USA, Inc., 2010 U.S. Dist. LEXIS 132986 (D. Or., Dec. 15, 2010)

Disposition: AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED-IN-PART, AND REMANDED.

CORE TERMS

infringement, patent, patentee, emulator, damages, lost profits, signal, clock, features, district court, non-infringing, sales, claim preclusion, specification, alleged infringement, license, willful, corresponding, argues, displayed, products, summary judgment, written description, invention, routing, embodiment, customer, laptop, developer, estoppel

Civil Procedure, Trials, Judgment as Matter of Law, Judgment Notwithstanding Verdict, Postverdict Judgment, Appeals, Standards of Review, Patent Law, Infringement Actions, Defenses, Estoppel & Laches, Remedies, Damages, Measure of Damages, Patentholder Losses, Compensatory Damages, Contracts Law, Measurement of Damages, Foreseeable Damages, Torts, Types of Damages, Evidence, Burdens of Proof, Allocation, Patentholder Losses, Reasonable Royalties, Specifications, Definiteness, Precision Standards, Claims & Specifications, Claims, Claim Language, Standards of Review, Abuse of Discretion, Admissibility, Procedural Matters, Rulings on Evidence, Infringing Acts, Intent & Knowledge, Increased Damages, Summary Judgment, Appeals, Jurisdiction & Review, De Novo Review, Business & Corporate Compliance, Patent Law, Infringing Acts, Judgments, Preclusion of Judgments, Res Judicata