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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Axis Communications AB, Canon Inc., and Canon U.S.A., Inc.
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`Petitioner
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`v.
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`Avigilon Fortress Corporation,
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`Patent Owner
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`Case: IPR2019-00235
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`U.S. Patent No. 7,868,912
`Issue Date: January 11, 2011
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`Title: Video Surveillance System Employing Video Primitives
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`PETITIONERS’ REQUEST FOR REHEARING
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`
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`Case No. IPR2019-00235
`United States Patent No. 7,868,912
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`Petitioner respectfully requests rehearing of the Board’s decision (Paper 19)
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`not to institute review on the present Petition for Inter Partes Review of U.S.
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`Patent No. 7,868,912 (the “’912 patent”). The Board’s decision is based on a
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`purported failure to present sufficient evidence for purposes of institution that
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`Flinchbaugh I is a prior art printed publication under pre-AIA 35 U.S.C. § 102(b).
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`See Paper 19 at 10-12.
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`The Precedential Opinion Panel (“POP”) is currently deciding the basic
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`issue of what evidence is required to establish that a reference qualifies as a
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`“printed publication” at the institution stage. Hulu, LLC v. Sound View
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`Innovations, LLC, IPR2018-01039, Paper 15 at 2 (April 3, 2019). There is a split
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`among panels at the PTAB over this issue. Many panels hold that under the
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`reasonable likelihood standard, indicia on a document should be a sufficient
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`threshold showing of publication to support institution. This is particularly
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`relevant where, as here, the Patent Owner merely raises speculative questions
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`about a document’s publication status, without any contrary evidence. Indeed,
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`Hulu is explicitly asking the POP to adopt this threshold showing as meeting the
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`reasonable likelihood standard. Hulu, IPR2018-01039, Paper 17 at 5, 9 (May 1,
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`2019) (citing Worlds, Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018)).
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`Here, the Board denied institution of the current petition because of errors in
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`the Florio declaration. But the Florio declaration merely provided supplemental
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`1
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`Case No. IPR2019-00235
`United States Patent No. 7,868,912
`evidence of publication. The Board did not address the evidence of publication on
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`the face of the Flinchbaugh I reference itself—which was expressly cited by
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`Petitioners—and shows that Flinchbaugh I was published in June 1994, more than
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`five years before the ’912 patent’s earliest priority date. The indicia on the face of
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`Flinchbaugh I is strong evidence that Flinchbaugh I qualifies as printed publication
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`and is sufficient to meet the threshold “reasonable likelihood” standard at
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`institution. See 35 U.S.C. § 314(a); Ex. 1005 at pp. 1-6. This is especially so
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`where there is no evidence that contradicts publication.
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`Accepting the uncontroverted evidence on the face of the document as
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`satisfying the reasonable likelihood standard also promotes efficiency. In most
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`cases, there is no dispute that a particular reference is a printed publication.
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`Indeed, publication disputes typically arise when the date of a reference is close in
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`time to the critical date of the patent or there is evidence that call its publication
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`status into question. Moreover, detailed evidence of publication is often
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`unavailable at the pre-institution phase in which there is no subpoena power.
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`Thus, for the reasons set forth in detail below, because the Petition cited
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`evidence of publication on the face of Flinchbaugh I and because the POP is about
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`to rule on the proper standard regarding the sufficiency of publication evidence,
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`rehearing is appropriate here pursuant to 37 C.F.R. § 42.71(d).
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`2
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`I.
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`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
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`currently being heard by the Precedential Opinion Panel (“POP”) in Hulu, LLC v.
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`Sound View Innovations, LLC, IPR2018-01039, Paper 15 at 2 (April 3, 2019) (the
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`issue to be addressed is: “What is required for a petitioner to establish that an
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`asserted reference qualifies as ‘printed publication’ at the institution stage?”).
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`Petitioner Hulu is similarly situated to Petitioner in the proceeding here.
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`Petitioner Hulu has taken the position that “[a]dditional evidence, like a supporting
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`declaration,” is only necessary prior to institution “if a reference lacks indicia
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`sufficient to establish a prima facie case of public availability.” Hulu, IPR2018-
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`01039, Paper 17 at 9 (May 1, 2019). Thus, the POP decision in Hulu will directly
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`address the sufficiency of facial evidence, like the evidence on Flinchbaugh I, that
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`is crucial to the correct determination of whether an IPR should be instituted here.
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`Briefing before the Hulu POP Panel has been completed, and the panel heard
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`oral argument on June 18, 2019. The POP’s decision should set the precedential
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`standard for demonstrating a reference satisfies the printed publication requirement
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`at institution. However, in the event the Hulu decision is limited to its facts or is
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`otherwise not applicable to the present situation, Petitioner is concurrently
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`requesting POP review to address the specific issues here.
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`3
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`II.
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`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
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`Declaration (Ex. 1007). But the Florio Declaration was not the only evidence of
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`publication of the Flinchbaugh I reference. Rather, the Petition and the face of
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`Flinchbaugh I,1 to which it cites (Ex. 1005), establish the publication status of
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`Flinchbaugh I, at least for institution purposes, without considering the Florio
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`Declaration at all. Petition at 2-3.
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`The pages of the Petition cited to by the Board (Paper 19 at 11) correctly
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`refer to “‘Autonomous Scene Monitoring System’ by Bruce Flinchbaugh et al.
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`(‘Flinchbaugh,’ Ex. 1005),” which is Flinchbaugh I, and state the following
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`information relating to the circumstances of the publication of Flinchbaugh I:
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`“Flinchbaugh was published in the Proceedings of the 10th Annual Joint
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`Government-Industry Security Technology Symposium & Exhibition. The
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`Symposium occurred in June 1994,” making Flinchbaugh I “prior art under pre-
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`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).
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`“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.
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`4
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`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
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`corroborated by Flinchbaugh I itself, which was submitted as Exhibit 1005, and
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`was correctly cited to by the Petition. See Ex. 1005 at p. 1. The first page of
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`Flinchbaugh I contains indicia of publication that the reader would expect to see on
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`a publication of proceedings of an annual event. The cover shows that: 1) the
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`proceedings were those of the “Joint Government-Industry Security Technology
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`Symposium & Exhibition”; 2) this event’s proceedings have been held and
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`published annually (“10th Annual”); 3) the event occurred on June 20-23, 1994 in
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`Williamsburg, Virginia; and 4) the 1994 proceedings were publicly distributed, and
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`in fact received and indexed in a library on February 12, 1997, as shown by the
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`upper-right stamp. Id. The list of presenters and attendees on the following pages
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`also make clear that the proceedings were well-attended, including by individuals
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`from dozens of organizations, such as the Department of Transportation, Sandia
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`National Laboratories, Lawrence Livermore National Lab, and the US Army Corps
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`of Engineers. See id. at pp. 2-6.
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`The Board’s decision does not reference the many prior PTAB decisions that
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`have repeatedly held that, at the institution stage, “conventional markers” of
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`publication are sufficient to show that a prior art reference is a printed publication.
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`See Provepharm Inc. v. Wista Labs. Ltd., IPR2018-00182, Paper 16 at 17-18 (July
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`5, 2018); see also Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365,
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`5
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`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
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`of public accessibility as of that date); see also Ericsson Inc. v. Intellectual
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`Ventures I LLC, IPR2014-00527, Paper 41 at 10-11 (May 18, 2015) (relying on
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`copyright notice); Informatica Corp. v. Protegrity Corp., CBM2015-00021,
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`Institution Decision, Paper 14 at 29-30 (Jun. 1, 2015) (document heading “Fall
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`Joint Computer Conference, 1971” is a “sufficient threshold showing” of
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`publication); Palo Alto Networks, Inc. v. Juniper Networks, Inc., IPR2013-00369,
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`Institution Decision, Paper 16 at 14-16 (Dec. 19, 2013) (date on face of publication
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`is a sufficient showing of publication); Toyota Motor Corp. v. Am. Vehicular Sci.
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`LLC, IPR2013-00417, Institution Decision, Paper 14 at 33 n.6 (Jan. 13, 2014)
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`(evidentiary issues to be addressed post-institution).
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`The indicia of Flinchbaugh I in this IPR is comparable to the publication
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`information relied on in these precedents. And, as the Board noted in Provepharm,
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`instituting based on such evidence is appropriate where the Patent Owner does no
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`more than point out alleged errors in Petitioners’ evidence of publication and
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`provides no evidence of its own regarding a different alleged date of public
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`availability. Provepharm, IPR2018-00182, Paper 16 at 18. The same is true here,
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`as Patent Owner has not contradicted the evidence on the face of Flinchbaugh I or
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`suggested that the evidence of publication located thereon is anything other than
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`what it appears to be.
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`6
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`Case No. IPR2019-00235
`United States Patent No. 7,868,912
`In the limited cases where a Patent Owner raises legitimate questions
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`regarding a reference’s publication status, those issues can be addressed post-
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`institution, where a petitioner could move for discovery or submit supplemental
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`evidence to address those issues. See, e.g., FanDuel, Inc. v. CG Technology
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`Development, LLC, IPR2017-00902, Final Written Decision, Paper 45 at 82-84
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`(Oct. 4, 2018) (after publication dispute raised in Patent Owner Preliminary
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`Response, panel considered a reference a printed publication for institution
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`purposes based on facial indicia and allowed submission of supplemental evidence
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`of publication after institution). This will allow the panel to consider whether the
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`patent owner’s issues are sufficiently serious to require discovery in the “interest of
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`justice.” See, 35 U.S.C. § 316(a)(5)(B). If the issue is significant the panel can
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`order discovery. And where the patent owner is raising speculative issues to
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`challenge otherwise reliable references, the panel can reject the motion for
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`supplemental evidence as unnecessary. See 37 CFR § 42.1(b).
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`Requiring a declaration, despite prima facie publication evidence available
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`from the reference itself, is inefficient and unworkable because there are no
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`established standards for what suffices to show publication for the myriad different
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`types of publications. This is particularly so at the institution stage when there is
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`no evidence contradicting publication. Thus, in every situation, a petitioner would
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`be unreasonably obligated to develop extensive pre-institution evidence detailing
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`7
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`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
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`raise in a pre-institution challenge to the publication status of the reference or that
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`a particular panel reviewing the petition might demand.
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`Accordingly, the proper and efficient application of the “reasonable
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`likelihood” standard requires accepting a reference’s facial indicia of publication at
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`the institution phase. Any evidentiary or sufficiency issues raised by the Patent
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`Owner can then be efficiently addressed post-institution under existing IPR
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`procedures. See, e.g., 37 CFR §§ 42.123, 42.64(b)(2).
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`III. Conclusion
`Under many prior PTAB decisions, the information on the face of
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`Flinchbaugh I, which was relied on by the Petition, is sufficient to show that
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`Flinchbaugh I is a prior art printed publication for purposes of institution. The
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`Hulu POP can and should affirm these decisions as the precedential standard for
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`judging publication at the institution stage. The panel should therefore reconsider
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`its decision in view of the forthcoming Hulu POP decision, which will directly
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`address this issue.
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`8
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`
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`Dated: July 1, 2019
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`Case No. IPR2019-00235
`United States Patent No. 7,868,912
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`By: /C. Gregory Gramenopoulos/
`
` By: /Joseph A. Calvaruso/
`
`C. Gregory Gramenopoulos
`Reg. No. 36,532
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`Joseph A. Calvaruso
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` Reg. No. 28,287
`
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`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
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`JVCPTABDocket@orrick.com
`
`Attorney for Petitioner
`Axis Communications AB
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` Attorney for Petitioners
` Canon Inc. and Canon U.S.A., Inc.
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`9
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`Case No. IPR2019-00235
`United States Patent No. 7,868,912
`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Petitioners’
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`Reply to Patent Owner’s Preliminary Response was served on July 1, 2019, via
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`email directed to counsel of record for Patent Owner at the following addresses:
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`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
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`Dated: July 1, 2019
`
`By: /Joseph A. Calvaruso/
`ORRICK, HERRINGTON & SUTCLIFFE LLP
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`10
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