`571.272.7822
`
`
` Paper No. 13
`
`Filed: March 28, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`AXIS COMMUNICATIONS AB,. CANON INC.,
`and CANON U.S.A., INC.,
`Petitioner,
`
`v.
`
`AVIGILON FORTRESS CORPORATION,
`Patent Owner.
`
`Cases IPR2019-00235
`Patent 7,868,912 B2
`____________
`
`
`
`Before GEORGIANNA W. BRADEN, KIMBERLY McGRAW, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2019-00235
`Patent 7,868,912 B2
`
`
`On March 21, 2019, a conference call was held between counsel for
`the parties and Judges Braden, McGraw, and Kaiser, to discuss Petitioner’s
`request (1) for authorization to file a reply to Patent Owner’s Preliminary
`Response and (2) to file a motion to pursuant to 37 C.F.R. § 42.104(c) to
`correct Exhibit 1007.
`Petitioner’s Request for Authorization to file a Reply
`Petitioner requests authorization to file a reply brief to Patent Owner’s
`Preliminary Response to address Patent Owner’s assertion that a reference
`(i.e., Kellogg) is not a printed publication. Petitioner asserts that Kellogg
`has been asserted as a printed publication in other inter partes proceedings
`involving Patent Owner, and Patent Owner had not objected previously to
`Kellogg’s status as a printed publication. Patent Owner opposes Petitioner’s
`request for a reply brief and states good cause does not exist for Petitioner to
`file a reply brief.
`Having considered Petitioner’s and Patent Owner’s contentions, we
`determine good cause exists supporting Petitioner’s request for a reply to
`Patent Owner’s Preliminary Response to address Patent Owner’s assertion
`that Kellogg is not a printed publication. Given that whether a reference
`qualifies as a printed publication is a threshhold issue, allowing the parties to
`brief this issue early promotes efficiences for the parties and the Board.
`Petitioner’s reply is limited to no more than five pages and is due by April 1,
`2019. Patent Owner may file a sur-reply, due by April 8, 2019. The sur-
`reply is also limited to no more than five pages.
`
`2
`
`
`
`IPR2019-00235
`Patent 7,868,912 B2
`
`
`Petitioner’s Request for Authorization to file a Motion under
`37 C.F.R. § 104(c) to correct Exhibit 1007
`
`Petitioner requests authorization to file a motion under
`37 C.F.R. § 104(c) to correct statements in the Declaration of Ms. Emily
`Florio (Exhibit 1007) that allegedly occurred due to a clerical mistake.
`Petitioner asserts that there are multiple “Flinchbaugh” references and that,
`although the Florio declaration contains statements relating to the wrong
`Flinchbaugh reference, the correct Flinchbaugh reference was attached as an
`exhibit to the declaration. Patent Owner responds that the errors in the
`declaration are not clerical errors that may be corrected under § 104(c).
`We authorize Petitioner to file a motion to correct Exhibit 1007 under
`37 C.F.R. § 104(c). Whether the errors are the type that may corrected
`under § 104(c) will be determined following receipt of Petitioner’s motion
`and Patent Owner’s opposition to the motion. Petitioner’s motion is due by
`April 1, 2018 and is limited to five pages. Patent Owner’s opposition to
`Petitioner’s motion is due by April 8, 2019 and is also limited to five pages.
`
`
`
`3
`
`
`
`IPR2019-00235
`Patent 7,868,912 B2
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner’s request for leave to file a reply is
`granted;
`FURTHER ORDERED that Patent Owner’s request to file a sur-reply
`is granted;
`FURTHER ORDERED that the reply shall be filed by April 1, 2019,
`the sur-reply shall be filed by April 8, 2019, and neither the reply nor the
`sur-reply shall exceed five (5) pages;
`FURTHER ORDERED that Petitioner’s request to file a motion
`pursuant to 37 C.F.R. § 104(c) to correct clerical mistakes in Exhibit 1007 is
`granted;
`FURTHER ORDERED that Petitioner’s motion shall be filed by April
`1, 2019 and shall not exceed five (5) pages; and
`FURTHER ORDERED that Patent Owner’s opposition to Petitioner’s
`motion shall be filed by April 8, 2019 and shall not exceed five (5) pages.
`
`
`
`
`
`
`4
`
`
`
`IPR2019-00235
`Patent 7,868,912 B2
`
`For PETITIONER:
`C. Gregory Gramenopoulos
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`gramenoc@finnegan.com
`
`Joseph Calvaruso
`Richard Martinelli
`ORRICK HERRINGTON & SUTCLIFFE
`jvcptabdocket@orrick.com
`rfmptabdocket@orrick.com
`
`For PATENT OWNER:
`Eugene Goryunov
`Michael Dokhanchy
`KIRKLAND & ELLIS
`egoryunov@kirkland.com
`reza.dokhanchy@kirkland.com
`
`
`5
`
`
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