`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`——————————
`
`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
`——————————
`Case: IPR2019-00235
`
`U.S. Patent No. 7,868,912
`Issue Date: January 11, 2011
`
`Title: Video Surveillance System Employing Video Primitives
`——————————
`
`PETITIONERS’ REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`
`
`
`
`
`
`
`Case No. IPR2019-00235
`U.S. Patent No. 7,868,912
`Pursuant to the Board’s Order of March 28, 2019 (Paper 13), Petitioners
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`hereby submit the following reply to Patent Owner’s Preliminary Response of
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`March 6, 2019 (Paper 9), including the contentions therein regarding Kellogg.
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`I.
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`
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`Patent Owner’s Cited Authority Does Not Support Its Stringent
`Declarant Requirement of “Personal Knowledge”
`
`Avigilon challenges the sufficiency of the Florio Declaration (Ex. 1007) by
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`arguing that “[t]he Federal Circuit has repeatedly held that proof of a prior-art
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`reference’s public availability at a library requires competent evidence from
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`witnesses with personal knowledge of the particular library’s practices.” Paper 9 at
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`18 (emphases added). Yet the cases cited by Avigilon do not create such a
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`stringent requirement for declarants, let alone “personal knowledge” based on
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`prior employment at the library in question. See Paper 9 at 19 (emphasis added).
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`In Hall, the Court affirmed the Board’s finding of a “printed publication”
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`based on an affidavit from a director of the library where a thesis paper was made
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`publicly available. In re Hall, 781 F.2d 897, 897 (Fed. Cir. 1986). In Acceleration
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`Bay, the Court upheld the Board’s conclusion that an article was not a “printed
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`publication” in view of testimony from an administrator at the library maintaining
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`the website where the article could be accessed. Acceleration Bay, LLC v.
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`Activision Blizzard Inc., 908 F.3d 765, 773 (Fed. Cir. 2018).
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`Avigilon argues that because declarations from library employees are
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`competent evidence showing public availability at a library, this type of evidence is
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`1
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`Case No. IPR2019-00235
`U.S. Patent No. 7,868,912
`“require[d]” to establish a reference’s public availability. Paper 9 at 18. But this is
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`a non-sequitur. Neither Hall nor Acceleration Bay turned on the relationship
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`between the declarant’s knowledge and the publishing library. Indeed, that issue
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`was not raised in those cases. Also, these decisions do not preclude competent
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`evidence of a reference’s public availability being shown by a declaration of a
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`professional librarian with knowledge of a library’s practices or a standardized
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`cataloging system (such as the MARC system) widely used by libraries to record
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`and make references accessible to the public.
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`II. Board Precedent Supports the Sufficiency of Ms. Florio’s Declaration
`
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`Avigilon’s purported evidentiary requirements also conflict with prior Board
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`decisions repeatedly finding that declarations from professional librarians are
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`sufficient to establish the public availability of a reference. In Symantec, the patent
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`owner—like Avigilon here—argued that a reference was not shown to be publicly
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`available because the librarian declarant “had no first-hand knowledge as to the
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`public availability” of the reference “or the creation of the MARC record” for it.
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`Symantec Corp. & Blue Coat Sys. LLC v. Finjan, Inc., No. IPR2015-01892, 2017
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`WL 1041718, at *12 (P.T.A.B. Mar. 15, 2017). The Board rejected these
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`arguments, “credit[ing] Dr. Hall-Ellis’s testimony regarding the reliability of
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`MARC records and the procedures that she employed in formulating her opinion in
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`this case.” Id. at *13 (emphasis added). The Board found that “neither first-hand
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`2
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`Case No. IPR2019-00235
`U.S. Patent No. 7,868,912
`knowledge of the distribution of Swimmer [the reference] at the Virus Bulletin
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`conference nor physical presence at the creation of the MARC record in December
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`1995 is required to prove public accessibility as of December 1995.” Id.
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`Here, Ms. Florio is a professional librarian who, based on her years of
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`experience, has knowledge of the MARC cataloging system and the practices of
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`libraries, including the publishing library, the Massachusetts Institute of
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`Technology (“MIT”) Libraries.1 IPR2019-00235, Ex. 1007. And as the Board
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`found in Symantec, it is not necessary that Ms. Florio have “personal knowledge by
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`virtue of her employment at the library” at issue, as Avigilon contends. Paper 9 at
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`19. Ms. Florio’s declaration is therefore credible evidence that Kellogg is a
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`“printed publication” and should be afforded weight in the present proceeding.
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`Avigilon’s purported evidentiary requirements also conflict with Avigilon’s
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`positions in a prior IPR involving Kellogg. In IPR2018-00138, a proceeding
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`involving a related patent assigned to Avigilon, Petitioners presented the very same
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`evidence through a similar declaration from Ms. Florio to establish that Kellogg is
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`a “printed publication.” IPR2018-00138, Paper 1 at 4; Exs. 1003, 1007, and 1011.
`
`
`1 The practices of the MIT Libraries are also a matter of public record, as
`evidenced by the declaration of Marilyn McSweeney, Exhibit 1007 in IPR2014-
`00200, who had personal knowledge of those practices. That declaration confirms
`Ms. Florio’s statements regarding the practices of the MIT Libraries in the 1990’s.
`IPR2014-00200, Ex. 1007 at ¶ 10.
`
`3
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`
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`Case No. IPR2019-00235
`U.S. Patent No. 7,868,912
`Avigilon did not challenge the sufficiency of that evidence. IPR2018-00138 at
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`Paper 7. And the Board found that Petitioners had shown a reasonable likelihood
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`of showing unpatentability based in part on Kellogg being a prior art reference.
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`IPR2018-00138, Paper 8 at 16-21.
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`III. Petitioner Has Shown That Kellogg Was “Publicly Accessible”
`
`
`Avigilon contends that “[i]n order for a reference like Kellogg—a thesis
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`paper—to qualify as a ‘printed publication,” it must be ‘meaningfully’ indexed for
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`a POSITA to find,” and that “[i]ndexing itself is not enough, as a reference must
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`also be ‘cataloged or indexed in a meaningful way.’” Paper 9 at 20-21. But the
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`Federal Circuit has expressly stated that this is not the standard for public
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`accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). Instead, the
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`relevant inquiry involves a consideration of “all of the facts and circumstances
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`surrounding the disclosure” and determining “whether an interested researcher
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`would have been sufficiently capable of finding the reference and examining its
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`contents.” Id. The totality of facts presented by Petitioner support a finding that
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`Kellogg was publicly accessible.
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`First, on its face, Kellogg has a stamp showing it was accepted into the MIT
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`library archives in 1993. Ex. 1003, 1 (stamped “Jul 09 1993”); see also Ex. 1007,
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`¶¶19-26 (supported by the Barton Catalog record, existence of a MARC record,
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`and citation in another publication, etc.). Kellogg was also cited in Flinchbaugh,
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`4
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`Case No. IPR2019-00235
`U.S. Patent No. 7,868,912
`which would have led interested parties to finding the paper. Ex. 1007, ¶25.
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`Avigilon incorrectly asserts that the “[i]ndexing by title in this instance is not well-
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`suited to finding [Kellogg]” because the two-word title—Visual Memory—would
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`allegedly yield many irrelevant results. Paper 9 at 21-22. But the Federal Circuit
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`has emphasized that a “reasonably diligent researcher with access to a database
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`that permits the searching of titles by keyword would be able to attempt several
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`searches using a variety of keyword combinations.” 583 F.3d at 1315. Avigilon
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`also fails to recognize that Kellogg’s MARC record contains an indexed field
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`“502,” which confirms that Kellogg is a thesis paper from MIT’s “Dept. of
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`Electrical Engineering and Computer Science.” Ex. 1007 at 108. This
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`identification provides additional criteria that would allow a researcher to narrow
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`her search beyond the title alone. As such, irrelevant results like Alzheimer’s
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`research would be avoided. See, Paper 9 at 21-22.
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`Moreover, Avigilon’s reliance on the outcome in Acceleration Bay is
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`misplaced because there, unlike here, the patent owner presented rebuttal evidence
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`that the search functionality in that case was not reliable. 908 F.3d at 773.
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`Accordingly, Petitioner has shown that Kellogg was publicly accessible and
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`a “printed publication” through the testimony of Ms. Florio—a professional
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`librarian.
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`
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`5
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`
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`Dated: April 1, 2019
`
`
`By: /C. Gregory Gramenopoulos/
`C. Gregory Gramenopoulos
`Reg. No. 36,532
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`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.
`
`
`
`6
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`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing Petitioners’ Reply to
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`Patent Owner’s Preliminary Response was served on April 1, 2019, via email
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`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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