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
`——————————
`Case: IPR2019-00235
`
`U.S. Patent No. 7,868,912
`Issue Date: January 11, 2011
`
`Title: Video Surveillance System Employing Video Primitives
`——————————
`
`PETITIONERS’ REQUEST FOR REHEARING
`
`
`——————————
`
`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
`——————————
`Case: IPR2019-00235
`
`U.S. Patent No. 7,868,912
`Issue Date: January 11, 2011
`
`Title: Video Surveillance System Employing Video Primitives
`——————————
`
`PETITIONERS’ REQUEST FOR REHEARING
`
`
`
`Case No. IPR2019-00235
`United States Patent No. 7,868,912
`
`Petitioner respectfully requests rehearing of the Board’s decision (Paper 19)
`
`not to institute review on the present Petition for Inter Partes Review of U.S.
`
`Patent No. 7,868,912 (the “’912 patent”). The Board’s decision is based on a
`
`purported failure to present sufficient evidence for purposes of institution that
`
`Flinchbaugh I is a prior art printed publication under pre-AIA 35 U.S.C. § 102(b).
`
`See Paper 19 at 10-12.
`
`The Precedential Opinion Panel (“POP”) is currently deciding the basic
`
`issue of what evidence is required to establish that a reference qualifies as a
`
`“printed publication” at the institution stage. Hulu, LLC v. Sound View
`
`Innovations, LLC, IPR2018-01039, Paper 15 at 2 (April 3, 2019). There is a split
`
`among panels at the PTAB over this issue. Many panels hold that under the
`
`reasonable likelihood standard, indicia on a document should be a sufficient
`
`threshold showing of publication to support institution. This is particularly
`
`relevant where, as here, the Patent Owner merely raises speculative questions
`
`about a document’s publication status, without any contrary evidence. Indeed,
`
`Hulu is explicitly asking the POP to adopt this threshold showing as meeting the
`
`reasonable likelihood standard. Hulu, IPR2018-01039, Paper 17 at 5, 9 (May 1,
`
`2019) (citing Worlds, Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018)).
`
`Here, the Board denied institution of the current petition because of errors in
`
`the Florio declaration. But the Florio declaration merely provided supplemental
`
`1
`
`
`
`Case No. IPR2019-00235
`United States Patent No. 7,868,912
`evidence of publication. The Board did not address the evidence of publication on
`
`the face of the Flinchbaugh I reference itself—which was expressly cited by
`
`Petitioners—and shows that Flinchbaugh I was published in June 1994, more than
`
`five years before the ’912 patent’s earliest priority date. The indicia on the face of
`
`Flinchbaugh I is strong evidence that Flinchbaugh I qualifies as printed publication
`
`and is sufficient to meet the threshold “reasonable likelihood” standard at
`
`institution. See 35 U.S.C. § 314(a); Ex. 1005 at pp. 1-6. This is especially so
`
`where there is no evidence that contradicts publication.
`
`Accepting the uncontroverted evidence on the face of the document as
`
`satisfying the reasonable likelihood standard also promotes efficiency. In most
`
`cases, there is no dispute that a particular reference is a printed publication.
`
`Indeed, publication disputes typically arise when the date of a reference is close in
`
`time to the critical date of the patent or there is evidence that call its publication
`
`status into question. Moreover, detailed evidence of publication is often
`
`unavailable at the pre-institution phase in which there is no subpoena power.
`
`Thus, for the reasons set forth in detail below, because the Petition cited
`
`evidence of publication on the face of Flinchbaugh I and because the POP is about
`
`to rule on the proper standard regarding the sufficiency of publication evidence,
`
`rehearing is appropriate here pursuant to 37 C.F.R. § 42.71(d).
`
`2
`
`
`
`I.
`
`Case No. IPR2019-00235
`United States Patent No. 7,868,912
`The Precedential Opinion Panel’s Upcoming Hulu Decision is Likely to
`Set the Standard for Publication Evidence at the Institution Stage
`The requisite level of publication evidence at the institution stage is
`
`currently being heard by the Precedential Opinion Panel (“POP”) in Hulu, LLC v.
`
`Sound View Innovations, LLC, IPR2018-01039, Paper 15 at 2 (April 3, 2019) (the
`
`issue to be addressed is: “What is required for a petitioner to establish that an
`
`asserted reference qualifies as ‘printed publication’ at the institution stage?”).
`
`Petitioner Hulu is similarly situated to Petitioner in the proceeding here.
`
`Petitioner Hulu has taken the position that “[a]dditional evidence, like a supporting
`
`declaration,” is only necessary prior to institution “if a reference lacks indicia
`
`sufficient to establish a prima facie case of public availability.” Hulu, IPR2018-
`
`01039, Paper 17 at 9 (May 1, 2019). Thus, the POP decision in Hulu will directly
`
`address the sufficiency of facial evidence, like the evidence on Flinchbaugh I, that
`
`is crucial to the correct determination of whether an IPR should be instituted here.
`
`Briefing before the Hulu POP Panel has been completed, and the panel heard
`
`oral argument on June 18, 2019. The POP’s decision should set the precedential
`
`standard for demonstrating a reference satisfies the printed publication requirement
`
`at institution. However, in the event the Hulu decision is limited to its facts or is
`
`otherwise not applicable to the present situation, Petitioner is concurrently
`
`requesting POP review to address the specific issues here.
`
`3
`
`
`
`II.
`
`Case No. IPR2019-00235
`United States Patent No. 7,868,912
`Evidence on the Face of Flinchbaugh I Alone Is Sufficient to Show Its
`Publication Status at the Institution Stage
`The Board’s decision focused on errors made in the original Florio
`
`Declaration (Ex. 1007). But the Florio Declaration was not the only evidence of
`
`publication of the Flinchbaugh I reference. Rather, the Petition and the face of
`
`Flinchbaugh I,1 to which it cites (Ex. 1005), establish the publication status of
`
`Flinchbaugh I, at least for institution purposes, without considering the Florio
`
`Declaration at all. Petition at 2-3.
`
`The pages of the Petition cited to by the Board (Paper 19 at 11) correctly
`
`refer to “‘Autonomous Scene Monitoring System’ by Bruce Flinchbaugh et al.
`
`(‘Flinchbaugh,’ Ex. 1005),” which is Flinchbaugh I, and state the following
`
`information relating to the circumstances of the publication of Flinchbaugh I:
`
`“Flinchbaugh was published in the Proceedings of the 10th Annual Joint
`
`Government-Industry Security Technology Symposium & Exhibition. The
`
`Symposium occurred in June 1994,” making Flinchbaugh I “prior art under pre-
`
`1 “Flinchbaugh I” is B. Flinchbaugh, et al., “Autonomous Scene Monitoring
`System,” Proceedings of the Joint 10th Annual Government-Industry Security
`Technology Symposium & Exhibition, June 20–23, 1994, pp. 205–209, which is
`Ex. 1005 to the Petition and Exhibit D to the original Florio Declaration (which
`itself is Ex. 1007 to the Petition).
`
`“Flinchbaugh II” is B. Flinchbaugh, et al., “Autonomous Video Surveillance,”
`SPIE Proceedings, 25th AIPR Workshop: Emerging Applications of Computer
`Vision, Feb. 26, 1997, Vol. 2962, p. 144-151, which is not an exhibit in this IPR
`but was erroneously referred to in the body of the original Florio Declaration.
`
`4
`
`
`
`Case No. IPR2019-00235
`United States Patent No. 7,868,912
`AIA 35 U.S.C. § 102(b).” See Petition at 2-3. This statement in the Petition is
`
`corroborated by Flinchbaugh I itself, which was submitted as Exhibit 1005, and
`
`was correctly cited to by the Petition. See Ex. 1005 at p. 1. The first page of
`
`Flinchbaugh I contains indicia of publication that the reader would expect to see on
`
`a publication of proceedings of an annual event. The cover shows that: 1) the
`
`proceedings were those of the “Joint Government-Industry Security Technology
`
`Symposium & Exhibition”; 2) this event’s proceedings have been held and
`
`published annually (“10th Annual”); 3) the event occurred on June 20-23, 1994 in
`
`Williamsburg, Virginia; and 4) the 1994 proceedings were publicly distributed, and
`
`in fact received and indexed in a library on February 12, 1997, as shown by the
`
`upper-right stamp. Id. The list of presenters and attendees on the following pages
`
`also make clear that the proceedings were well-attended, including by individuals
`
`from dozens of organizations, such as the Department of Transportation, Sandia
`
`National Laboratories, Lawrence Livermore National Lab, and the US Army Corps
`
`of Engineers. See id. at pp. 2-6.
`
`The Board’s decision does not reference the many prior PTAB decisions that
`
`have repeatedly held that, at the institution stage, “conventional markers” of
`
`publication are sufficient to show that a prior art reference is a printed publication.
`
`See Provepharm Inc. v. Wista Labs. Ltd., IPR2018-00182, Paper 16 at 17-18 (July
`
`5, 2018); see also Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365,
`
`5
`
`
`
`Case No. IPR2019-00235
`United States Patent No. 7,868,912
`1376 (Fed. Cir. 2018) (date on front of a catalog was evidence supporting a finding
`
`of public accessibility as of that date); see also Ericsson Inc. v. Intellectual
`
`Ventures I LLC, IPR2014-00527, Paper 41 at 10-11 (May 18, 2015) (relying on
`
`copyright notice); Informatica Corp. v. Protegrity Corp., CBM2015-00021,
`
`Institution Decision, Paper 14 at 29-30 (Jun. 1, 2015) (document heading “Fall
`
`Joint Computer Conference, 1971” is a “sufficient threshold showing” of
`
`publication); Palo Alto Networks, Inc. v. Juniper Networks, Inc., IPR2013-00369,
`
`Institution Decision, Paper 16 at 14-16 (Dec. 19, 2013) (date on face of publication
`
`is a sufficient showing of publication); Toyota Motor Corp. v. Am. Vehicular Sci.
`
`LLC, IPR2013-00417, Institution Decision, Paper 14 at 33 n.6 (Jan. 13, 2014)
`
`(evidentiary issues to be addressed post-institution).
`
`The indicia of Flinchbaugh I in this IPR is comparable to the publication
`
`information relied on in these precedents. And, as the Board noted in Provepharm,
`
`instituting based on such evidence is appropriate where the Patent Owner does no
`
`more than point out alleged errors in Petitioners’ evidence of publication and
`
`provides no evidence of its own regarding a different alleged date of public
`
`availability. Provepharm, IPR2018-00182, Paper 16 at 18. The same is true here,
`
`as Patent Owner has not contradicted the evidence on the face of Flinchbaugh I or
`
`suggested that the evidence of publication located thereon is anything other than
`
`what it appears to be.
`
`6
`
`
`
`Case No. IPR2019-00235
`United States Patent No. 7,868,912
`In the limited cases where a Patent Owner raises legitimate questions
`
`regarding a reference’s publication status, those issues can be addressed post-
`
`institution, where a petitioner could move for discovery or submit supplemental
`
`evidence to address those issues. See, e.g., FanDuel, Inc. v. CG Technology
`
`Development, LLC, IPR2017-00902, Final Written Decision, Paper 45 at 82-84
`
`(Oct. 4, 2018) (after publication dispute raised in Patent Owner Preliminary
`
`Response, panel considered a reference a printed publication for institution
`
`purposes based on facial indicia and allowed submission of supplemental evidence
`
`of publication after institution). This will allow the panel to consider whether the
`
`patent owner’s issues are sufficiently serious to require discovery in the “interest of
`
`justice.” See, 35 U.S.C. § 316(a)(5)(B). If the issue is significant the panel can
`
`order discovery. And where the patent owner is raising speculative issues to
`
`challenge otherwise reliable references, the panel can reject the motion for
`
`supplemental evidence as unnecessary. See 37 CFR § 42.1(b).
`
`Requiring a declaration, despite prima facie publication evidence available
`
`from the reference itself, is inefficient and unworkable because there are no
`
`established standards for what suffices to show publication for the myriad different
`
`types of publications. This is particularly so at the institution stage when there is
`
`no evidence contradicting publication. Thus, in every situation, a petitioner would
`
`be unreasonably obligated to develop extensive pre-institution evidence detailing
`
`7
`
`
`
`Case No. IPR2019-00235
`United States Patent No. 7,868,912
`how the reference was published by guessing at what issues a Patent Owner might
`
`raise in a pre-institution challenge to the publication status of the reference or that
`
`a particular panel reviewing the petition might demand.
`
`Accordingly, the proper and efficient application of the “reasonable
`
`likelihood” standard requires accepting a reference’s facial indicia of publication at
`
`the institution phase. Any evidentiary or sufficiency issues raised by the Patent
`
`Owner can then be efficiently addressed post-institution under existing IPR
`
`procedures. See, e.g., 37 CFR §§ 42.123, 42.64(b)(2).
`
`III. Conclusion
`Under many prior PTAB decisions, the information on the face of
`
`Flinchbaugh I, which was relied on by the Petition, is sufficient to show that
`
`Flinchbaugh I is a prior art printed publication for purposes of institution. The
`
`Hulu POP can and should affirm these decisions as the precedential standard for
`
`judging publication at the institution stage. The panel should therefore reconsider
`
`its decision in view of the forthcoming Hulu POP decision, which will directly
`
`address this issue.
`
`8
`
`
`
`Dated: July 1, 2019
`
`Case No. IPR2019-00235
`United States Patent No. 7,868,912
`
`By: /C. Gregory Gramenopoulos/
`
` By: /Joseph A. Calvaruso/
`
`C. Gregory Gramenopoulos
`Reg. No. 36,532
`
`Joseph A. Calvaruso
`
` Reg. No. 28,287
`
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER LLP
`
` ORRICK, HERRINGTON & SUTCLIFFE
`LLP
`
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Tel. 202.408.4263; Fax 202.408.4400
`
`51 West 52nd Street
`
` New York, NY 10019-6142
` Tel. 212.506.5140; Fax 212.506.5151
`
`gramenoc@finnegan.com
`
`JVCPTABDocket@orrick.com
`
`Attorney for Petitioner
`Axis Communications AB
`
` Attorney for Petitioners
` Canon Inc. and Canon U.S.A., Inc.
`
`9
`
`
`
`Case No. IPR2019-00235
`United States Patent No. 7,868,912
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Petitioners’
`
`Reply to Patent Owner’s Preliminary Response was served on July 1, 2019, via
`
`email directed to counsel of record for Patent Owner at the following addresses:
`
`Eugene Goryunov
`Kirkland & Ellis LLP
`300 North LaSalle
`Chicago, IL 60654
`eugene.goryunov@kirkland.com
`Avigilon_Axis@kirkland.com
`
`Reza Dokhanchy
`Adam R. Alper
`Akshay S. Deoras
`Kirkland & Ellis LLP
`555 California Street
`San Francisco, CA 94104
`reza.dokhanchy@kirkland.com
`adam.alper@kirkland.com
`akshay.deoras@kirkland.com
`
`Michael W. De Vries
`Kirkland & Ellis LLP
`333 Hope Street
`Los Angeles, CA 90071
`michael.devries@kirkland.com
`
`Dated: July 1, 2019
`
`By: /Joseph A. Calvaruso/
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`10
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
