SAN FRANCISCO U.S. District Court Judge Maxine Chesney has denied a motion by Synopsys Inc. seeking to enjoin the U.S. Patent and Trademark Office from reexamining two patents held by rival Magma Design Automation Inc. The two patents are at the core of the ongoing high-profile patent litigation here between the two companies.
Synopsys filed a motion Sept. 1 asking the court to block the reexamination of the patents by the PTO after a third partysince revealed to be Mentor Graphics Corp. filed a request for reexamination. The court issued an order barring Magma from seeking reexamination of these patents last year.
The PTO has yet to determine whether it will reexamine the patents, which concern the fixed timing methodology at the heart of the litigation. Under PTO rules, the agency has until mid-October to conduct a review to determine if reexamination is warranted.
In denying the Synopsys motion Friday (Sept. 29), the court said that since the PTO has not determined if it will reexamine the patents, Synopsys cannot prove hardship as a result of the request. "Unless and until the PTO issues an order for reexamination of one or both of the patents, Synopsys will not suffer any injury as a result of its inability to participate in the reexamination process," the court order states.
"The court specially said Synopsys can renew its application should the PTO decide to proceed with the reexamination," said Yvette Huygen, a spokesperson for Synopsys. "If the PTO does decide to do that, Synopsys will renew its application."
Last month, the PTO rejected all 15 claims of the third and final patent involved in the litigation, which is held by Synopsys.
Magma contends that if all the patents involved are ultimately invalidated by the PTO, the case would essentially be over.
"We're pleased the court reached this decision, and we consider it to be the correct one," said David Stanley, Magma's vice president of corporate affairs. "We believe it is important to the industry and to the public that the patent office remains free to evaluate the validity of these patents."
Last week, Synopsys filed a motion requesting the reopening of limited discovery in the litigation, which is currently in recess following the conclusion of the first phase of the trial in April. In that motion, Synopsys asked Chesney to reopen the trial to limited discovery so that it may examine the circumstance surrounding the request by Mentor. The motion argues that Magma may have played a role in the filing of Mentor's request, noting similarities between the Mentor request and documents Magma submitted to the court last year.
Synopsys (Mountain View, Calif.) and Magma (Santa Clara, Calif.) have been involved in a contentious patent dispute since September 2004, when Synopsys sued Magma for patent infringement, claiming that Magma's former chief scientist used timing closure methodology originally developed while employed by Synopsys in Magma's Blast Fusion IC physical design suite.
At an April trial here to contest ownership of the technology behind all three relevant patents, Synopsys claimed to be the sole owner of the patents while Magma asserted the patents are jointly owned by Synopsys and IBM. Magma has maintained that it is entitled to the technology through a cross-licensing agreement that it has with IBM.