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Case No. IPR2019-00235
`U.S. Patent No. 7,868,912
`
`
`
`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
`
`U.S. Patent No. 7,868,912
`Issue Date: January 11, 2011
`
`Title: Video Surveillance System Employing Video Primitives
`——————————
`
`MOTION TO CORRECT THE FLORIO DECLARATION
`UNDER 37 C.F.R. § 42.104(c)
`
`
`
`
`

`

`Case No. IPR2019-00235
`U.S. Patent No. 7,868,912
`
`Pursuant to 37 C.F.R. § 42.104(c), Petitioners seek to correct Exhibit 1007
`
`(“the Florio Declaration”). No correction is sought with respect to the Petition or
`
`any other exhibit. Due to a clerical error, Ms. Florio’s statements and supporting
`
`exhibits for Flinchbaugh mistakenly address another reference by the same author,
`
`Flinchbaugh II. Patent Owner has informed Petitioners that it opposes this motion.
`
`The Board granted leave to file this motion on March 28, 2019.
`
`Rule
`37 C.F.R. § 42.104(c) permits motions to correct clerical errors. Section
`
`42.104 is “remedial in nature and is therefore entitled to a liberal interpretation.”
`
`ABB Inc. v. Roy-G-BIV Corp., IPR2013-00063, Paper 21 at 7 (Jan. 16, 2013).
`
`Relevant Facts and Background
`On November 12, 2018, Petitioners filed the instant Petition, which
`
`1.
`
`includes grounds based on “Autonomous Scene Monitoring System” by Bruce
`
`Flinchbaugh et al. (“Flinchbaugh” - Ex. 1005). Petitioners also filed the Florio
`
`Declaration (Ex. 1007) to submit evidence showing the public availability and
`
`publication of the references used in the Petition.
`
`2.
`
`Patent Owner’s filed its Preliminary Response on March 6, 2019,
`
`stating that the Florio Declaration includes statements regarding Flinchbaugh that
`
`are not correct, including the title, date, and statements regarding the supporting
`
`exhibits. Patent Owner Preliminary Response at 15-18. Before receiving the
`
`2
`
`

`

`Case No. IPR2019-00235
`U.S. Patent No. 7,868,912
`
`Preliminary Response, Petitioners did not realize the identified errors. Ex. 1045 at
`
`¶ 5.
`
`3.
`
`The statements identified by Patent Owner in the Florio Declaration
`
`relate to another publication, “Autonomous Video Surveillance,” by Bruce
`
`Flinchbaugh et al. (“Flinchbaugh II”), which was used in a recent proceeding,
`
`IPR2018-00138, directed to another patent assigned to Patent Owner. Ex. 1045 at
`
`¶ 4. The statements are correct as to Flinchbaugh II and based on similar
`
`statements in Ms. Florio’s declaration in IPR2018-00138. Compare IPR2018-
`
`00138, Ex. 1007 ¶¶ 18-20, 48-52 with IPR2019-00235, Ex. 1007 ¶¶ 9-11, 27-31.
`
`4.
`
`The incorrect statements in the Florio Declaration resulted from a
`
`clerical error in which Flinchbaugh II was electronically provided to and used by
`
`Ms. Florio instead of Flinchbaugh. Ex. 1045 at ¶ 3. Due to this inadvertent
`
`clerical error, Flinchbaugh II, instead of Flinchbaugh, is addressed in the Florio
`
`Declaration. Id. While a correct copy of Flinchbaugh was attached as Exhibit D
`
`to the Florio Declaration, the declaration includes statements and supporting
`
`exhibits (i.e., Exhibits E and F) regarding Flinchbaugh II instead of Flinchbaugh.
`
`5.
`
`A corrected version of the Florio Declaration is attached to this
`
`motion in clean form (Exhibit 1043, including the original exhibits and corrected
`
`Exhibits E and F) and compare form (Exhibit 1044). The corrected version of the
`
`Florio Declaration includes revised statements and updated Exhibits E and F
`
`3
`
`

`

`Case No. IPR2019-00235
`U.S. Patent No. 7,868,912
`
`regarding Flinchbaugh in place of what was submitted earlier for Flinchbaugh II.
`
`Exhibit E contains the MARC record data for Flinchbaugh and Exhibit F contains
`
`other supporting evidence of publication, all of which are public.
`
`6.
`
`Petitioners requested authorization to file this motion on March 15,
`
`2019. A call with the Board was held on March 21, 2019 and the Board issued an
`
`order on March 28, 2019 that authorized Petitioners to file the motion.
`
`Discussion
`Good cause exists to correct the error. As indicated above, the Florio
`
`Declaration incorrectly includes statements and supporting exhibits regarding
`
`Flinchbaugh II rather than the Flinchbaugh reference used in the Petition. During
`
`the preparation of the declaration, the wrong file was electronically provided to and
`
`used by Ms. Florio (i.e., Flinchbaugh II instead of Flinchbaugh). As a result, the
`
`Florio Declaration includes statements and supporting exhibits regarding
`
`Flinchbaugh II instead of Flinchbaugh.
`
`The error is clerical in nature, resulting from the wrong reference being used
`
`to prepare the declaration. Flinchbaugh II was used in the recent proceeding,
`
`IPR2018-00138 between the parties, and Flinchbaugh II and Flinchbaugh have
`
`many similarities, including, (1) the same principal author, (2) similar titles, (3)
`
`similar document sizes, and (4) both were published as part of proceedings for a
`
`conference. Due in part to these similarities, the wrong file was electronically
`
`4
`
`

`

`Case No. IPR2019-00235
`U.S. Patent No. 7,868,912
`
`provided to and used by Ms. Florio to prepare her declaration.
`
`The Board has previously allowed similar corrections. In Netflix, Inc. v.
`
`Copy Protection LLC, two versions of a paper with the same author were used to
`
`prepare a petition. IPR2015-00921, Paper 19 at 2-3 (July 30, 2015). The incorrect
`
`version of the paper was inadvertently saved to the directory of final exhibits and
`
`erroneous citations were added to the petition. Id. There, the Board found the
`
`error was clerical in nature and allowed the petitioner to correct the petition. Id. at
`
`4-5. For similar reasons, the Board should allow the requested corrections here.
`
`Moreover, the inadvertent use of Flinchbaugh II instead of Flinchbaugh in
`
`the Florio Declaration does not affect the substance of Petitioners’ arguments, nor
`
`prejudice Patent Owner. The Petition’s citations to Flinchbaugh are correct and
`
`Patent Owner’s preliminary response fully responds to the presented grounds.
`
`The Board consistently permits corrections where the error causes little or no
`
`prejudice. See, e.g., Nissan N. Am. Inc. v. Hitachi Auto. Sys. Ltd., IPR2014-01548,
`
`Paper 20 at 3 (Apr. 15, 2015); Array Biopharma Inc. v. Takeda Pharma Co. Ltd.,
`
`IPR2015-00754, Paper 20 at 4 (Oct. 21, 2015). The Board in Netflix, for example,
`
`observed that the Patent Owner had “sufficient notice of the grounds and
`
`supporting evidence.” IPR2015-00921, Paper 19 at 4. The same is true here.1
`
`
`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.
`
`5
`
`

`

`Case No. IPR2019-00235
`U.S. Patent No. 7,868,912
`
`The Board has even waived § 42.104(c)’s requirement of a “clerical” error.
`
`In Volkswagen Group of America v. Emerachem Holdings, LLC, the Board
`
`emphasized the policy to “secure the just, speedy and inexpensive resolution of
`
`every proceeding” (IPR2014-01555, Paper 20 at 4 (Mar. 16, 2015) (citing 37
`
`C.F.R. § 42.1(b)) and accepted verified translations under 37 C.F.R. § 42.5(b) (id.
`
`at 6). Here, Petitioners have the option of re-filing the petition, with the corrected
`
`Florio Declaration, because there is no time bar under 35 U.S.C. § 315(b).
`
`Permitting correction would obviate the need to re-file and conserve resources.
`
`See Netapp, Inc. v. Intellectual Ventures II LLC, IPR2017-00276, Paper 12 at 3
`
`(May 5, 2017). The Board should therefore allow the corrections under 37 C.F.R.
`
`§ 42.5(b) even if it declines to do so under 37 CFR § 42.104(c).
`
`Lastly, Flinchbaugh is unquestionably published prior art. In addition to
`
`being catalogued by the British Library, an inventor of the ’912 patent admitted
`
`Flinchbaugh was published. Ex. 1043 at ¶¶ 27-28, 30-31. Patent Owner’s
`
`opportunistic dispute here is purely form over substance.
`
`Request for Relief
`Accordingly, Petitioners request that the Florio Declaration (Exhibit 1007 to
`
`the Petition) be replaced with Exhibit 1043, without changing the petition filing
`
`date.
`
`
`
`6
`
`

`

`
`Dated: April 1, 2019
`
`
`By: /C. Gregory Gramenopoulos/
` C. Gregory Gramenopoulos
` Reg. No. 36,532
`
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER LLP
`
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Tel. 202.408.4263 Fax 202.408.4400
`
`gramenoc@finnegan.com
`
`Attorney for Petitioner
`Axis Communications AB
`
`
`Case No. IPR2019-00235
`U.S. Patent No. 7,868,912
`
` By: /Joseph A. Calvaruso/
`
` Joseph A. Calvaruso
`
` Reg. No. 28,287
`
`
`
` ORRICK, HERRINGTON & SUTCLIFFE
`
` LLP
`
`51 West 52nd Street
`
` New York, NY 10019-6142
` Tel. 212.506.5140; Fax 212.506.5151
`
`
`
`jcalvaruso@orrick.com
`
` Attorney for Petitioners
` Canon Inc. and Canon U.S.A., Inc.
`
`
`
`7
`
`

`

`Case No. IPR2019-00235
`U.S. Patent No. 7,868,912
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing Motion to Correct
`
`the Florio Declaration Under 37 C.F.R. § 42.104(c) was served on April 1, 2019,
`
`via email directed to counsel of record for Patent Owner at the following:
`
`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
`
`
`Date: April 1, 2019
`
`
`
`
`By: /William Esper/
`William Esper
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`
`
`
`

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