From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Calvaruso, Joseph <jcalvaruso@orrick.com>
`Monday, July 1, 2019 2:45 PM
`Precedential_Opinion_Panel_Request
`eugene.goryunov@kirkland.com; guang-yu.zhu@finnegan.com;
`gramenoc@finnegan.com; Kelly.horn@finnegan.com; Avigilon_Axis@kirkland.com;
`reza.dokhanchy@kirkland.com; Adam Alper; akshay.deoras@kirkland.com; Martinelli,
`Richard F.; Miller, Tyler; Ning, Weimin; michael.devries@kirkland.com
`Precedential Opinion Panel Review Request - IPR2019-00235
`
`Dear Precedential Opinion Panel,
`
`Pursuant to PTAB Standard Operating Procedure 2 (Revision 10), I write on behalf of Petitioner
`Canon Inc. (“Canon”) to recommend Precedential Opinion Panel (“POP”) review of the Board’s
`decision not to institute inter partes review in IPR2019-00235 (Paper No. 19), depending on the
`content of the POP’s forthcoming ruling in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-
`01039.
`
`As explained in Canon’s motion for rehearing, which is being filed concurrent with this request, Canon
`believes that the POP’s decision in Hulu is likely to set a standard explaining whether evidence on the
`face of a publication establishes that the reference qualifies as a “printed publication” at the institution
`stage. However, the particular facial indicia at issue in Hulu relate to those on the face of a book,
`such as a copyright notice or ISBN number. In contrast, the publication that is the subject of Canon’s
`motion for reconsideration, Flinchbaugh I, is part of a different kind of reference – the Proceedings of
`the Joint 10th Annual Government-Industry Security Technology Symposium & Exhibition, which
`occurred on June 20-23, 1994 in Williamsburg, Virginia – that contains different kinds of indicia of
`publication, such as the date of the event, the attendees, and a stamp showing the publication’s
`receipt and indexing by a library.
`
`As the POP recognized in Hulu, there is conflicting non-precedential law regarding what is sufficient
`evidence of publication at the institution stage, and there is a need for guidance on the issue. But
`there is a chance that the forthcoming Hulu opinion may only provide guidance with respect to the
`reference at issue in that case, a textbook. However, the need for guidance may be even greater
`with respect to references relating to academic and industry events, and such references are more
`commonly used to argue for the invalidity of a patent than textbooks are.
`
`Accordingly, based on my professional judgment, I believe this case requires an answer to one of
`more precedent-setting questions of exceptional importance, including the following, to the extent that
`it is not resolved by the Hulu POP decision:
`
`1. Whether the facial indicia of publication on the proceedings of a well-attended annual event is
`sufficient evidence of the date of a publication’s public availability for purposes of institution of
`inter partes review, where the patent owner does not submit any evidence to the contrary.
`
`/s/ Joseph A. Calvaruso
`Attorney of Record for Petitioner Canon Inc.
`
`1
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`IPR2019-00235
`Ex. 3002
`
`

`

`Joseph A. Calvaruso
`Partner, New York Intellectual Property Practice Group Leader
`
`Orrick
`New York
`T +1-212-506-5140
`M +1-914-414-5174
`jcalvaruso@orrick.com
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