June 27, 2013
Synopsys, Inc., a Delaware Corporation, Plaintiff,
Mentor Graphics Corporation, an Oregon Corporation, Defendant.
David T. Pritikin (Pro Hac Vice), SIDLEY AUSTIN LLP, Chicago, IL, M. Patricia Thayer (SBN 90818), Philip W. Woo (SBN 196459), SIDLEY AUSTIN LLP, San Francisco, CA, I. Neel Chatterjee (SBN 173985), ORRICK, HERRINGTON & SUTCLIFFE LLP, Menlo Park, CA, William H. Wright (SBN 161580), ORRICK, HERRINGTON & SUTCLIFFE LLP, Los Angeles, CA, Attorneys for Plaintiff, SYNOPSYS, INC., a Delaware Corporation.
George A. Riley (SBN 118304), Mark E. Miller (SBN 130200), Luann L. Simmons (SBN 203526) Michael Sapoznikow (SBN 242640) Elizabeth Offen-Brown (SBN 279077) O'MELVENY & MYERS LLP, San Francisco, CA, Attorneys for Defendant, MENTOR GRAPHICS CORPORATION.
REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE IN THE AUTHORIZATION OF A COMMISSIONER PURSUANT TO CHAPTER II OF THE HAGUE CONVENTION ON THE TAKING OF EVIDENCE ABROAD IN CIVIL OR COMMERCIAL MATTERS OF MARCH 18, 1970
MAXINE M. CHESNEY, District Judge.
1. A request is hereby made by the United States District Court of the Northern District of California, at 450 Golden Gate Ave., San Francisco, California 94102, United States of America, to Ministère de la Justice, Direction des Affaires Civiles et du Sceau, Bureau de l'entraide civile et commerciale international (D3), 13, Place Vendôme, 75042 Paris Cedex 01, France, for their assistance in obtaining evidence located in France and depositions of persons residing in France in connection with the above-captioned action between Plaintiff Synopsys, Inc. ("Synopsys") and Defendant Mentor Graphics Corporation ("Mentor Graphics"). This request is made pursuant to Chapter II of the Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters of March 18, 1970 (the "Hague Convention"), 23 U.S.T. 2555, codified at 28 U.S.C.A. § 1781, which is in force between the United States and France.
2. In conformity with Article 17 of the Hague Convention, the United States District Court of the Northern District of California presents its compliments to the Ministère de la Justice and has the honor of requesting assistance in obtaining approval of its designated Commissioner and Alternate Commissioner to collect evidence with consent of the parties in France pursuant to Chapter II of the Hague Convention.
3. The designated Commissioner, Shelle Higgins, is a court reporter who resides in France. Ms. Higgins is qualified to be commissioned to collect evidence and has advised Synopsys that she is willing to serve as Commissioner in this matter. The designated Alternate Commissioner, Audrey Shirley, is a court reporter residing in England. Ms. Shirley is qualified to be commissioned to collect evidence and has advised Synopsys that she is willing to serve as Alternate Commissioner in this matter. Attached as Exhibit A is the Order of the United States District Court of the Northern District of California, appointing Ms. Higgins as Commissioner and Ms. Shirley as Alternate Commissioner, pending the approval of the Ministère de la Justice. The designated Commissioner and Alternate Commissioner have no interest in this litigation and are fully independent of the parties involved in the lawsuit in the United States and from any of the witnesses who are note parties to the action. The parties have chosen this Commissioner and Alternate Commissioner to facilitate document production and depositions in the interests of judicial economy and efficiency, and Synopsys and Mentor Graphics have consented to produce documents and to hold depositions with the assistance of the Commissioner and Alternate Commissioner.
4. The parties to the above-captioned civil action pending in the United States District Court of the Northern District of California, are as follows:
a. The Plaintiff and its counsel are as follows: Synopsys, represented by David T. Pritikin, Sidley Austin LLP, 1 South Dearborn Street, Chicago, Illinois 60603, United States of America (fax no.: (312) 853-7036); M. Patricia Thayer and Philip W. Woo, Sidley Austin LLP, 555 California Street, Suite 2000, San Francisco, California 94104, United States of America (fax no.: (415) 772-7400); I. Neel Chatterjee, Orrick, Herrington & Sutcliffe LLP, 1000 Marsh Road, Menlo Park, California 94025, United States of America (fax no.: (650) 614-7401); and William H. Wright, Orrick, Herrington & Sutcliffe LLP, 777 South Figueroa Street, Suite 3200, Los Angeles, CA 90017, United States of America (fax no.: (213) 612-2499).
b. The Defendant and its counsel are as follows: Mentor Graphics, represented by George A. Riley, Mark E. Miller, Michael Sapoznikow, Robin Michael Wall, Elizabeth Offen-Brown and Diana Catherine Rogosa, O'Melveny & Myers, Two Embarcadero Center, 28th Floor, San Francisco, California 94111, United States of America (fax no.: (415) 984-8701).
5. On December 21, 2012, Synopsys served the Complaint in this action, alleging that Mentor Graphics' Precision Synthesis and Veloce products infringe United States Patent No. 5, 748, 488, United States Patent No. 5, 530, 841, United States Pat No. 5, 680, 318, and United States Patent No. 6, 836, 420. The patents-all owned by Synopsys-concern synthesis technology used in the electronic design automation ("EDA") industry. Synopsys seeks equitable relief and money damages for infringement of these patents. On May 17, 2013, Mentor Graphics filed its First Amended Answer to Synopsys's Complaint, denying Synopsys's infringement allegations and asserting defenses including invalidity, lack of notice, laches, and estoppel.
6. The evidence to be obtained consists of certain documents that are maintained by Synopsys and Mentor Graphics, which are all located in Meudon La Forêt and Paris, France. This evidence is relevant to the parties' claims and/or defenses in this matter, and will assist the Court in resolving the dispute presented in the civil action before it. The parties have agreed to locate and produce documents located in France that are responsive to document requests already served in this case and any future document requests served in this case.
7. The following individuals are employees of Synopsys or Mentor Graphics and may have information relevant to the parties' claims and/or defenses. Accordingly, depositions of these individuals may be taken in France:
a. Synopsys employees: William Addi, Christophe Ballan, Serge Bedikian, Luc Burgun, Francois Douezy, Frederic Dumoulin, Frederic Emirian, Gerard Fenelon, Christine Guinement-Navarre, David Robin, and Ziqing Yao. These employees are located in Paris and may have information relevant to the operation, functionality, and marketing of Synopsys's ZeBu products.
b. Mentor Graphics employees: Gerard Morisset, Gabrielle Pullini, Eric Selosse, Fabrice Touzard, Laurent Vuillemin, and Jean-Sebastien Weil. These employees are located in Meudon La Forêt and may have information relevant to the operation, functionality, and marketing of Mentor Graphics' Celaro and Veloce products.
8. Depositions under the Commission will be conducted with the assistance of an authorized court stenographer, videographer, and/or a certified French/English interpreter. The party conducting the deposition will give reasonable written notice. To the extent required by United States law, the party conducting the deposition will give a list of subject matters, relevant to either party's claims or defenses, to the opposing party for each deposition. The questions will be created and asked by counsel for the party conducting the deposition and any other party attending the deposition that may desire to ask questions, without opportunity for prior review of the questions. The Commissioner will administer the deposition, but will not rule upon counsel's questions or conduct any of the questioning herself. An unabridged English language transcript of the deposition will be prepared if necessary.
9. The production of documents to the Commissioner or Alternate Commissioner pursuant to the Hague Convention, and the terms of the Request, shall not constitute or operate as a waiver of any argument, position, allegation or defense of any party in the above-captioned action, or of the attorney-client privilege, the work product doctrine, or any other privileges, rights, or protections that may apply to that evidence under the law of France, the United States, or California.
10. Accordingly, it is hereby requested that, in the interest of justice, you cause by your usual and proper means, such orders to be entered as French law permits (i) authorizing Shelle Higgins and Audrey Shirley to act as commissioners of this Court and (ii) allowing Shelle Higgins and Audrey Shirley, pursuant to Article 17 of the Hague Convention and in accordance with the Federal Rules of Civil Procedure to (a) receive from producing parties documents located in France and to simultaneously transmit the documents to counsel for Synopsys and Mentor Graphics and (b) attend depositions that occur in France.
11. Costs associated with a deposition under the Commission shall be borne by the party seeking the deposition, including, without limitation, the fees of the commissioner and the translation fees or costs. Each party will be responsible for the fees and expenses, if any, of its own attorneys relating to the Hague Convention proceedings.
12. The parties designate the appointed Commissioner, Shelle Higgins, to accept on their behalf service of the Hague Convention authorization and notifications, and any other official correspondence, from the French governmental authorities related to Hague Convention proceedings. Ms. Higgins can be reached at:
Re: Synopsys v. Mentor
The Commissioner, Ms. Higgins, shall transmit such authorization and notifications and official correspondence to counsel for Synopsys and Mentor Graphics upon receipt.
13. This request for international judicial assistance is made pursuant to this Court's Order of June 27, 2013.
14. This Court expresses its appreciation to the Ministère de la Justice for its courtesy and assistance in this matter.