UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`Axis Communications AB, Canon Inc., and Canon U.S.A., Inc.,
`
`Petitioners,
`
`v.
`
`Avigilon Fortress Corporation,
`
`Patent Owner.
`______________________
`
`Case: IPR2019-00235
`
`Patent No. 7,868,912 C1
`Filing Date: April 5, 2005
`Issue Date: January 11, 2011
`
`Title: Video Surveillance System Employing Video Primitives
`
`______________________
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONERS’ MOTION TO
`CORRECT UNDER 37 C.F.R. § 42.104(c)
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`Axis Communications AB, Canon Inc., and Canon U.S.A., Inc.,
`
`Petitioners,
`
`v.
`
`Avigilon Fortress Corporation,
`
`Patent Owner.
`______________________
`
`Case: IPR2019-00235
`
`Patent No. 7,868,912 C1
`Filing Date: April 5, 2005
`Issue Date: January 11, 2011
`
`Title: Video Surveillance System Employing Video Primitives
`
`______________________
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONERS’ MOTION TO
`CORRECT UNDER 37 C.F.R. § 42.104(c)
`
`
`
`I.
`
`IPR2019-00235
`Patent Owner’s Opposition to Petitioners’ Motion to Correct
`
`Introduction
`The Petition as filed failed to provide any evidence as to the public availability
`
`of the Flinchbaugh reference. The Board permitted Petitioners to file a motion
`
`requesting to “correct” the declaration of Emily R. Florio (Ex. 1007) under 37 C.F.R.
`
`§ 42.104(c), which authorizes only correction of “a clerical or typographical
`
`mistake.” Because Petitioners’ lack of evidence was not clerical or typographical,
`
`Patent Owner respectfully requests that the Board deny the motion.
`
`II.
`
`Petitioners’ Proposed “Correction” is Substantive
`In contrast with the ability to amend in district court, “in IPR a petitioner may
`
`only make clerical or typographical corrections to its petition.” Saint Regis Mohawk
`
`Tribe v. Mylan Pharms. Inc., 896 F.3d 1322, 1328 (Fed. Cir. 2018). The Board’s
`
`application of § 42.104(c) indicates that clerical or typographical errors include
`
`errors such as uploading an incorrect reference, Netflix, Inc. v. Copy Protection LLC,
`
`IPR2015-00921, Paper 19 at 3–4 (July 30, 2015), or citing an incorrect line number
`
`where the parenthetical contained the correct text, Mylan Pharms. Inc. v. Sanofi-
`
`Aventis Deutchsland GMBH, IPR2018-01675, Paper 21 at 2–3 (Feb. 20, 2019).
`
`Nothing like that occurred here. It was not a typographical or clerical error to
`
`draft and submit a substantive declaration discussing the alleged public availability
`
`of a completely different reference with completely different content. Compare Ex.
`
`1005 with IPR2018-00138, Ex. 1007, Ex. M. This is not a situation where
`
`
`
`1
`
`
`
`IPR2019-00235
`Patent Owner’s Opposition to Petitioners’ Motion to Correct
`Petitioners uploaded the wrong document due to a clerk’s mistake—the sworn
`
`statements in the declaration here were wholly incorrect. As a result, Petitioners
`
`lacked any evidence regarding the public availability of Flinchbaugh, something that
`
`cannot be written off as a mere clerical error.
`
`The distinction between a clerical error and non-clerical error is clear. A
`
`clerical error is one made by “those upon whom no duty devolves . . . to exercise
`
`discretion or judgment.” Zhongshan Broad Ocean Motor Co. v. Nidec Motor Corp.,
`
`IPR2014-01122, Paper 20, at 12 (quotation omitted). By contrast, “if the error [is]
`
`due in some measure to the party in interest or the supervisor—those upon who a
`
`duty did devolve to exercise original thought or judgment in the matter—then
`
`making a correction would amount to more than correcting a clerical error.” Id. at
`
`13 (same). Petitioners admit that the attorney who oversaw and participated in the
`
`drafting of the declaration used the wrong reference. Ex. 1045 ¶¶ 1–5. Neither the
`
`error by Mr. Zhu or Ms. Florio can said to be merely clerical: both were required to
`
`exercise judgment, as both participated in drafting, and Mr. Zhu oversaw the process.
`
`The situation in Zhongshan was similar. There, Petitioners “filed an English
`
`translation,” but “they did not include an affidavit attesting to the accuracy of the
`
`translation as required.” IPR2014-01122, Paper 20, at 11. Counsel “did not notice
`
`that an affidavit attesting to the accuracy . . . was not included . . . .” Id. at 12. The
`
`Board denied the motion because “[t]he standard for excusing a filing error under 37
`
`2
`
`
`
`IPR2019-00235
`Patent Owner’s Opposition to Petitioners’ Motion to Correct
`C.F.R. § [42].104(c) is not mere unintentionality or inadvertence.” Id. As in that
`
`case, “[t]his is not an instance in which an attesting affidavit had been obtained but
`
`was omitted from Petitioners’ filing because of a clerical failure to collate the
`
`affidavit with other material being filed. Rather, the mistake resulted from a failure
`
`to obtain the attesting affidavit at all.” Id. at 13.
`
`Other decisions confirm this error is substantive and outside of § 42.104(c).
`
`For example, the Board rejected a proposed correction where a Petitioner omitted a
`
`claim element from its invalidity chart, even though the evidence was elsewhere.
`
`IBM v. Intellectual Ventures, IPR2014-00660, Paper 17 at 2–3 (July 31, 2014). The
`
`situation here is worse, because equivalent evidence is nowhere in the original filing.
`
`Where, as here, “Petitioner in effect is asking for authorization to substantively
`
`amend its Petition,” the request should be denied. Nat’l Envir. Prods. Ltd. v. Dri-
`
`Steem Corp., IPR2014-01503, Paper 11 at 2–3 (Nov. 4, 2014).
`
`That Petitioners are seeking to substantively amend their Petition is
`
`demonstrated by the significant additions in the new declaration that go far beyond
`
`corrections of mere “clerical” errors: (1) allegations that Flinchbaugh was presented
`
`at a different conference two years earlier and published in a completely different
`
`journal in a different year (Ex. 1044 at ¶ 27); (2) a new discussion of the British
`
`Library (never referenced in the original declaration) that allegedly received
`
`Flinchbaugh, with new evidence purporting to explain certain fields and dates in
`
`3
`
`
`
`IPR2019-00235
`Patent Owner’s Opposition to Petitioners’ Motion to Correct
`records relating to the British Library (Ex. 1044 at ¶ 28); (3) Flinchbaugh’s alleged
`
`citation in a U.S. patent that was not discussed in any way in the original declaration
`
`(Ex. 1044 at ¶ 29); and (4) Flinchbaugh’s alleged citation in another publication that
`
`was not discussed in any way in the original declaration (Ex. 1044 at ¶¶ 30-31).
`
`Further, although the Board only permitted Petitioners to request to correct
`
`statements about Flinchbaugh in IPR2019-00235, Petitioners’ “correction” adds
`
`evidence about Kellogg—and purports to apply to IPR2019-00236 as well. Ex. 1044
`
`¶¶ 1, 25. Both are improper and warrant denial of Petitioners’ motion.
`
`Patent Owner would be severely prejudiced by Petitioners’ alleged
`
`“correction,” as it has had no opportunity to address any of this new alleged evidence
`
`of public availability, and this brief is not the place—nor is the one week available
`
`to address the new declaration or the five pages available in this brief sufficient to
`
`do so. In the present circumstances, it would be manifestly unfair to Patent Owner
`
`to institute trial on the basis of the Flinchbaugh reference—which Petitioners use in
`
`their analysis for every claim in both grounds of its petition—and thereby subject
`
`Patent Owner to substantial expense in continuing the IPR.
`
`Petitioners’ cases are not comparable. In Netflix, the Petition discussed the
`
`correct content and web address, but the wrong exhibit was uploaded. IPR2015-
`
`00921, Paper 19 at 2–4. The same occurred in Nissan, where the wrong exhibit was
`
`inadvertently filed. Nissan N. Am. Inc. v. Diamond Coating Techs., IPR2014-01548,
`
`4
`
`
`
`IPR2019-00235
`Patent Owner’s Opposition to Petitioners’ Motion to Correct
`Paper 20 at 2 (April 15, 2015). Likewise, in Volkswagen Grp. Am. v. EmeraChem
`
`Holds., the correction did “not affect[] the merits” of the petition; instead, the
`
`correction simply related to an issue that “technically d[id] not comply with the
`
`rules.” IPR2014-01555, Paper 20 at 5, 7 (Mar. 16, 2015) (quote omitted). Here, the
`
`merits of public availability are clearly at issue, and the issue is not a nuanced
`
`technical regulation, but rather a fundamental lack of any evidence in the petition.
`
`Patent Owner would also be prejudiced in another significant way. It appears
`
`that Petitioners rushed to file a petition on November 12, 2018, to avoid the new
`
`claim-construction standard that went into effect the next day. Petition at 72; see 83
`
`Fed. Reg. 51340. Because claims were theoretically interpreted more broadly under
`
`the “broadest reasonable interpretation” standard, it was anticipated that many
`
`petitioners would rush to file. See, e.g., Dennis Crouch, Final Rule Package:
`
`Phillips Standard to be Used by PTAB in IPR Claim Construction, Oct. 10, 2018,
`
`https://patentlyo.com/patent/2018/10/phillips-standard-construction.html.
`
`
`
`It
`
`appears that Petitioners imprudently scrambled to file before they were ready, in an
`
`attempt to gain the benefit of the easier standard. They should not now be permitted
`
`to supplement their petition to provide evidence they should have included initially.
`
`III. Conclusion
`Petitioners lack good cause for their substantive “correction.” Patent Owner
`
`respectfully urges the Board to reject Petitioners’ motion.
`
`5
`
`
`
`By:
`
`IPR2019-00235
`Patent Owner’s Opposition to Petitioners’ Motion to Correct
`
`Respectfully submitted,
`
`
`/s/ Eugene Goryunov
`Eugene Goryunov (Reg. No. 61,579)
`KIRKLAND & ELLIS LLP
`300 North LaSalle
`Chicago, IL 60654
`Telephone: 312-862-2000
`Facsimile: 312-862-2200
`eugene.goryunov@kirkland.com
`
`Lead Counsel for Patent Owner
`Avigilon Fortress Corporation
`
`Akshay S. Deoras (pro hac vice)
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`Telephone: 415-439-1400
`Facsimile: 415-439-1500
`akshay.deoras@kirkland.com
`
`Dated: April 8, 2019
`
`
`
`
`
`
`
`
`
`Reza Dokhanchy (Reg. No. 62,795)
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`Telephone: 415-439-1400
`Facsimile: 415-439-1500
`reza.dokhanchy@kirkland.com
`
`Adam R. Alper (pro hac vice)
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`Telephone: 415-439-1400
`Facsimile: 415-439-1500
`adam.alper@kirkland.com
`
`Back-Up Counsel for Patent Owner
`Avigilon Fortress Corporation
`
`Michael W. De Vries (pro hac vice)
`KIRKLAND & ELLIS LLP
`333 South Hope Street
`Los Angeles, CA 90071
`Telephone: 213-680-8400
`Facsimile: 213-680-8500
`michael.devries@kirkland.com
`
`
`
`
`
`6
`
`
`
`IPR2019-00235
`Patent Owner’s Opposition to Petitioners’ Motion to Correct
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing PATENT
`
`OWNER’S OPPOSITION TO PETITIONERS’ MOTION TO CORRECT
`
`UNDER 37 C.F.R. § 104(c) was served on April 8, 2019 via electronic service on
`
`lead and back up counsel:
`
`Axis Communications AB
`Lead Counsel
`
`C. Gregory Gramenopoulos (Reg. No.
`36,532)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4263
`Fax: 202-408-4400
`Email: gramenoc@finnegan.com
`
`
`Cannon Inc. and Canon U.S.A., Inc.
`Lead Counsel
`
`Joseph A. Calvaruso (Reg. No. 28,287)
`Orrick, Herrington, & Sutcliffe LLP
`2050 Main Street, Suite 1110
`Irvine, CA 92614-8255
`Telephone: 212-506-5140
`Facsimile: 949-567-6710
`
`
`
`7
`
`Axis Communications AB
`Backup Counsel
`
`Kelly S. Horn (Reg. No. 70,657)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4313
`Fax: 202-408-4400
`Email: kelly.horn@finnegan.com
`
`Guang-Yu Zhu (Reg. No. 66,250)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4410
`Fax: 202-408-4400
`Email: guang-yu.zhu@finnegan.com
`
`Cannon Inc. and Canon U.S.A., Inc.
`Back-Up Counsel
`
`Richard F. Martinell (Reg. No. 52,003)
`Orrick, Herrington, & Sutcliffe LLP
`2050 Main Street, Suite 1110
`Irvine, CA 92614-8255
`Telephone: 212-506-5140
`Facsimile: 949-567-6710
`
`
`
`IPR2019-00235
`Patent Owner’s Opposition to Petitioners’ Motion to Correct
`Email: ipprosecution@orrick.com
`Email: ipprosecution@orrick.com
`
`
`Dated: April 8, 2019
`
` /s/ Eugene Goryunov
`
`Eugene Goryunov (Reg. No. 61,579)
`KIRKLAND & ELLIS LLP
`300 North LaSalle
`Chicago, IL 60654
`Telephone: 312-862-2000
`Facsimile: 312-862-2200
`eugene.goryunov@kirkland.com
`
`Akshay S. Deoras (pro hac vice)
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`Telephone: 415-439-1400
`Facsimile: 415-439-1500
`akshay.deoras@kirkland.com
`
`Michael W. De Vries (pro hac vice)
`KIRKLAND & ELLIS LLP
`333 South Hope Street
`Los Angeles, CA 90071
`Telephone: 213-680-8400
`Facsimile: 213-680-8500
`michael.devries@kirkland.com
`
`Reza Dokhanchy (Reg. No. 62,795)
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`Telephone: 415-439-1400
`Facsimile: 415-439-1500
`reza.dokhanchy@kirkland.com
`
`Adam R. Alper (pro hac vice)
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`Telephone: 415-439-1400
`Facsimile: 415-439-1500
`adam.alper@kirkland.com
`
`
`
`
`
`
`
`8
`
`
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