STIPULATED MOTION AND [PROPOSED] ORDER FOR ENTRY OF FINAL JUDGMENT AS TO COUNTS 1-3 OF THE COMPLAINT AND STAY OF ACTION AS TO COUNT 4

MAXINE M. CHESNEY, District Judge.

Plaintiff Synopsys, Inc. ("Synopsys") and Defendant Mentor Graphics Corporation ("Mentor") jointly submit this stipulated motion seeking the following relief from the Court, accompanied by a proposed order:

1. Entry of a final judgment under Federal Rule of Civil Procedure 54(b), as to Counts 1-3 of the Complaint, adjudicating the eight asserted claims of United States Patent Nos. 5,530,841, 5,680,318, and 5,748,488 (collectively, the "Gregory Patents") invalid under Section 101 of the Patent Act, reserving Synopsys' right to appeal from such judgment; and

2. An order further staying the action as to Count 4 (United States Patent No. 6,836,420) pending the resolution of the inter partes review of the '420 patent, see Dkt. No. 215, including any appeal therefrom, and of any appeal of the Order on Motions for Summary Judgment, Dkt. No. 442 ("Section 101 Order").

Synopsys and Mentor respectfully submit that the requested relief is properly based on the following:

1. Synopsys' Complaint in this action includes four counts. Dkt. No. 1. Counts 1-3 relate to Synopsys' infringement allegations for the Gregory Patents. Id. at 3-7. Count 4 relates to Synopsys' infringement allegations for the '420 patent. Id. at 7-8. Mentor has not asserted any counterclaims in this action. Dkt. No. 43.

2. The Court granted summary judgment finding all asserted claims of the Gregory Patents invalid under 35 U.S.C. § 101. Section 101 Order at 11. As a result, there is currently nothing left to be determined on Counts 1-3 of the Complaint. Synopsys intends to appeal the Section 101 Order.

3. The Court previously, on August 1, 2014, stayed all proceedings regarding Count 4 pending inter partes review of the '420 patent. Dkt. No. 215.

4. Because the proceedings for the only remaining claim in this action are stayed, all deadlines have been vacated (except for a periodic joint status report regarding the stay). Dkt. No. 444.

5. The three Gregory Patents that are the subject of Counts 1-3 share the same inventors, specification, and priority date. Two of the Gregory Patents have already expired, and the remaining patent will expire within the next month.

6. The '420 patent, on the other hand, has different inventors, a different specification, and a different priority date than the Gregory Patents. The '420 patent and the Gregory Patents have no overlapping construed claimed terms. See Dkt. No. 100. Further, the '420 patent was acquired by Synopsys when it acquired Synplicity, Inc., whereas Synopsys was the original assignee of the Gregory Patents. The '420 patent is also currently subject to an inter partes review before the Patent Trial and Appeal Board. The Board has not yet issued a final written decision regarding the '420 patent. Once the Board issues a final written decision, either party may appeal that decision to the Federal Circuit. 35 U.S.C. § 141(c).

7. The parties have agreed to the following:

8. Under Federal Rule of Civil Procedure 54(b), "the court may direct entry of a final judgment as to one or more, but fewer than all, claims . . . if the court expressly determines that there is no just reason for delay." In patent cases, Federal Circuit law applies to Rule 54(b) certification issues. Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 829 (Fed. Cir. 2003). Rule 54(b) certification is proper where there is: (1) a final judgment, and (2) the district court determines that there is no just reason for delay of entry. Curtiss-Wright Corp. v. General Elec. Co., 446 U.S. 1, 7-8 (1980); see also W.L. Gore Assocs., Inc. v. Int'l Med. Prosthetics Research Assocs., Inc., 975 F.2d 858, 861-62 (Fed. Cir. 1992). A final judgment is "a decision upon a cognizable claim for relief" and that is "an ultimate disposition of an individual claim entered in the course of a multiple claims action." Curtiss-Wright, 446 U.S. at 7 (citing Sears, Roebuck & Co. v. Mackey, 351 U.S. 427, 436 (1956)).

9. The parties agree that the judgment with respect to the Gregory Patents is final and disposes of the claims asserting the Gregory Patents. The parties further agree that there is no just reason for delay of entry of a final judgment of invalidity with regard to the Gregory Patents.

10. The Section 101 Order left nothing to be determined on Synopsys' claims of infringement of the Gregory Patents under Counts 1-3. All proceedings on Count 4 regarding the '420 patent are stayed. In light of these facts, the differences between the Gregory Patents and the '420 patent, and the parties' agreements, there is no just reason for delay in any appeal of the Section 101 Order. These circumstances justify immediate appeal of the Section 101 Order, and "departure from the general rule that all issues decided by the district court should be resolved in a single appeal of a final judgment." See iLOR, LLC v. Google, Inc., 550 F.3d 1067, 1072-73 (Fed. Cir. 2008).

IT IS SO STIPULATED.

Pursuant to Civil Local Rule 5-1(i)(3), counsel for Mentor Graphics has obtained the concurrence of Plaintiff's counsel in the filing of this stipulated request.

PURSUANT TO STIPULATION, IT IS SO ORDERED.

1. Final judgment is hereby entered under Federal Rule of Civil Procedure 54(b), as to Counts 1-3 of the Complaint, adjudicating the eight asserted claims of United States Patent Nos. 5,530,841, 5,680,318, and 5,748,488 (collectively, the "Gregory Patents") invalid under Section 101 of the Patent Act, reserving Synopsys' right to appeal from such judgment. For the reasons set forth in the parties' stipulated motion, there is no just reason for delay in any appeal on these counts.

2. Furthermore, the action as to Count 4 (United States Patent No. 6,836,420) is further stayed pending the resolution of the inter partes review of the '420 patent, including any appeal therefrom, and of any appeal of the Section 101 Order on Counts 1-3.