`U.S. Patent No. 7,868,912
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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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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`Petitioners
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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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`MOTION TO CORRECT THE FLORIO DECLARATION
`UNDER 37 C.F.R. § 42.104(c)
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`Case No. IPR2019-00235
`U.S. Patent No. 7,868,912
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`Pursuant to 37 C.F.R. § 42.104(c), Petitioners seek to correct Exhibit 1007
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`(“the Florio Declaration”). No correction is sought with respect to the Petition or
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`any other exhibit. Due to a clerical error, Ms. Florio’s statements and supporting
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`exhibits for Flinchbaugh mistakenly address another reference by the same author,
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`Flinchbaugh II. Patent Owner has informed Petitioners that it opposes this motion.
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`The Board granted leave to file this motion on March 28, 2019.
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`Rule
`37 C.F.R. § 42.104(c) permits motions to correct clerical errors. Section
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`42.104 is “remedial in nature and is therefore entitled to a liberal interpretation.”
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`ABB Inc. v. Roy-G-BIV Corp., IPR2013-00063, Paper 21 at 7 (Jan. 16, 2013).
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`Relevant Facts and Background
`On November 12, 2018, Petitioners filed the instant Petition, which
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`1.
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`includes grounds based on “Autonomous Scene Monitoring System” by Bruce
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`Flinchbaugh et al. (“Flinchbaugh” - Ex. 1005). Petitioners also filed the Florio
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`Declaration (Ex. 1007) to submit evidence showing the public availability and
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`publication of the references used in the Petition.
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`2.
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`Patent Owner’s filed its Preliminary Response on March 6, 2019,
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`stating that the Florio Declaration includes statements regarding Flinchbaugh that
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`are not correct, including the title, date, and statements regarding the supporting
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`exhibits. Patent Owner Preliminary Response at 15-18. Before receiving the
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`U.S. Patent No. 7,868,912
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`Preliminary Response, Petitioners did not realize the identified errors. Ex. 1045 at
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`¶ 5.
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`3.
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`The statements identified by Patent Owner in the Florio Declaration
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`relate to another publication, “Autonomous Video Surveillance,” by Bruce
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`Flinchbaugh et al. (“Flinchbaugh II”), which was used in a recent proceeding,
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`IPR2018-00138, directed to another patent assigned to Patent Owner. Ex. 1045 at
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`¶ 4. The statements are correct as to Flinchbaugh II and based on similar
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`statements in Ms. Florio’s declaration in IPR2018-00138. Compare IPR2018-
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`00138, Ex. 1007 ¶¶ 18-20, 48-52 with IPR2019-00235, Ex. 1007 ¶¶ 9-11, 27-31.
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`4.
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`The incorrect statements in the Florio Declaration resulted from a
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`clerical error in which Flinchbaugh II was electronically provided to and used by
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`Ms. Florio instead of Flinchbaugh. Ex. 1045 at ¶ 3. Due to this inadvertent
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`clerical error, Flinchbaugh II, instead of Flinchbaugh, is addressed in the Florio
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`Declaration. Id. While a correct copy of Flinchbaugh was attached as Exhibit D
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`to the Florio Declaration, the declaration includes statements and supporting
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`exhibits (i.e., Exhibits E and F) regarding Flinchbaugh II instead of Flinchbaugh.
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`5.
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`A corrected version of the Florio Declaration is attached to this
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`motion in clean form (Exhibit 1043, including the original exhibits and corrected
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`Exhibits E and F) and compare form (Exhibit 1044). The corrected version of the
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`Florio Declaration includes revised statements and updated Exhibits E and F
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`regarding Flinchbaugh in place of what was submitted earlier for Flinchbaugh II.
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`Exhibit E contains the MARC record data for Flinchbaugh and Exhibit F contains
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`other supporting evidence of publication, all of which are public.
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`6.
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`Petitioners requested authorization to file this motion on March 15,
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`2019. A call with the Board was held on March 21, 2019 and the Board issued an
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`order on March 28, 2019 that authorized Petitioners to file the motion.
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`Discussion
`Good cause exists to correct the error. As indicated above, the Florio
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`Declaration incorrectly includes statements and supporting exhibits regarding
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`Flinchbaugh II rather than the Flinchbaugh reference used in the Petition. During
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`the preparation of the declaration, the wrong file was electronically provided to and
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`used by Ms. Florio (i.e., Flinchbaugh II instead of Flinchbaugh). As a result, the
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`Florio Declaration includes statements and supporting exhibits regarding
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`Flinchbaugh II instead of Flinchbaugh.
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`The error is clerical in nature, resulting from the wrong reference being used
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`to prepare the declaration. Flinchbaugh II was used in the recent proceeding,
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`IPR2018-00138 between the parties, and Flinchbaugh II and Flinchbaugh have
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`many similarities, including, (1) the same principal author, (2) similar titles, (3)
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`similar document sizes, and (4) both were published as part of proceedings for a
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`conference. Due in part to these similarities, the wrong file was electronically
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`provided to and used by Ms. Florio to prepare her declaration.
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`The Board has previously allowed similar corrections. In Netflix, Inc. v.
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`Copy Protection LLC, two versions of a paper with the same author were used to
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`prepare a petition. IPR2015-00921, Paper 19 at 2-3 (July 30, 2015). The incorrect
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`version of the paper was inadvertently saved to the directory of final exhibits and
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`erroneous citations were added to the petition. Id. There, the Board found the
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`error was clerical in nature and allowed the petitioner to correct the petition. Id. at
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`4-5. For similar reasons, the Board should allow the requested corrections here.
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`Moreover, the inadvertent use of Flinchbaugh II instead of Flinchbaugh in
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`the Florio Declaration does not affect the substance of Petitioners’ arguments, nor
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`prejudice Patent Owner. The Petition’s citations to Flinchbaugh are correct and
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`Patent Owner’s preliminary response fully responds to the presented grounds.
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`The Board consistently permits corrections where the error causes little or no
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`prejudice. See, e.g., Nissan N. Am. Inc. v. Hitachi Auto. Sys. Ltd., IPR2014-01548,
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`Paper 20 at 3 (Apr. 15, 2015); Array Biopharma Inc. v. Takeda Pharma Co. Ltd.,
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`IPR2015-00754, Paper 20 at 4 (Oct. 21, 2015). The Board in Netflix, for example,
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`observed that the Patent Owner had “sufficient notice of the grounds and
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`supporting evidence.” IPR2015-00921, Paper 19 at 4. The same is true here.1
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`1 To the extent the Board finds prejudice, it should permit correction and afford
`Patent Owner an additional response. See Netflix, IPR2015-00921, Paper 19 at 5.
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`U.S. Patent No. 7,868,912
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`The Board has even waived § 42.104(c)’s requirement of a “clerical” error.
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`In Volkswagen Group of America v. Emerachem Holdings, LLC, the Board
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`emphasized the policy to “secure the just, speedy and inexpensive resolution of
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`every proceeding” (IPR2014-01555, Paper 20 at 4 (Mar. 16, 2015) (citing 37
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`C.F.R. § 42.1(b)) and accepted verified translations under 37 C.F.R. § 42.5(b) (id.
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`at 6). Here, Petitioners have the option of re-filing the petition, with the corrected
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`Florio Declaration, because there is no time bar under 35 U.S.C. § 315(b).
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`Permitting correction would obviate the need to re-file and conserve resources.
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`See Netapp, Inc. v. Intellectual Ventures II LLC, IPR2017-00276, Paper 12 at 3
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`(May 5, 2017). The Board should therefore allow the corrections under 37 C.F.R.
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`§ 42.5(b) even if it declines to do so under 37 CFR § 42.104(c).
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`Lastly, Flinchbaugh is unquestionably published prior art. In addition to
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`being catalogued by the British Library, an inventor of the ’912 patent admitted
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`Flinchbaugh was published. Ex. 1043 at ¶¶ 27-28, 30-31. Patent Owner’s
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`opportunistic dispute here is purely form over substance.
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`Request for Relief
`Accordingly, Petitioners request that the Florio Declaration (Exhibit 1007 to
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`the Petition) be replaced with Exhibit 1043, without changing the petition filing
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`date.
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`Dated: April 1, 2019
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`By: /C. Gregory Gramenopoulos/
` C. Gregory Gramenopoulos
` Reg. No. 36,532
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`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER LLP
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`901 New York Avenue, NW
`Washington, DC 20001-4413
`Tel. 202.408.4263 Fax 202.408.4400
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`gramenoc@finnegan.com
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`Attorney for Petitioner
`Axis Communications AB
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`Case No. IPR2019-00235
`U.S. Patent No. 7,868,912
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` By: /Joseph A. Calvaruso/
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` Joseph A. Calvaruso
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` Reg. No. 28,287
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` ORRICK, HERRINGTON & SUTCLIFFE
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` LLP
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`51 West 52nd Street
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` New York, NY 10019-6142
` Tel. 212.506.5140; Fax 212.506.5151
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`
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`jcalvaruso@orrick.com
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` Attorney for Petitioners
` Canon Inc. and Canon U.S.A., Inc.
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`Case No. IPR2019-00235
`U.S. Patent No. 7,868,912
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing Motion to Correct
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`the Florio Declaration Under 37 C.F.R. § 42.104(c) was served on April 1, 2019,
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`via email directed to counsel of record for Patent Owner at the following:
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`Eugene Goryunov
`Kirkland & Ellis LLP
`300 North LaSalle
`Chicago, IL 60654
`eugene.goryunov@kirkland.com
`Avigilon_Axis@kirkland.com
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`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
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`Michael W. De Vries
`Kirkland & Ellis LLP
`333 Hope Street
`Los Angeles, CA 90071
`michael.devries@kirkland.com
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`Date: April 1, 2019
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`
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`By: /William Esper/
`William Esper
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
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