Paper No. 19
`Trials@uspto.gov
`571.272.7822 Filed: June 4, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AXIS COMMUNICATIONS AB, CANON INC.,
`and CANON U.S.A., INC.,
`Petitioner,
`
`v.
`
`AVIGILON FORTRESS CORPORATION,
`Patent Owner.
`
`Cases IPR2019-00235
`Patent 7,868,912 B2 & C1
`____________
`
`
`Before GEORGIANNA W. BRADEN, KIMBERLY McGRAW, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`DECISION
`
`Denying Motion to Correct the Florio Declaration
`37 C.F.R. §§ 42.5(b), 42.104(c)
`
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a), 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Trials@uspto.gov
`571.272.7822 Filed: June 4, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AXIS COMMUNICATIONS AB, CANON INC.,
`and CANON U.S.A., INC.,
`Petitioner,
`
`v.
`
`AVIGILON FORTRESS CORPORATION,
`Patent Owner.
`
`Cases IPR2019-00235
`Patent 7,868,912 B2 & C1
`____________
`
`
`Before GEORGIANNA W. BRADEN, KIMBERLY McGRAW, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`DECISION
`
`Denying Motion to Correct the Florio Declaration
`37 C.F.R. §§ 42.5(b), 42.104(c)
`
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a), 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2019-00235
`Patent 7,868,912 B2 & C1
`
`
`I. INTRODUCTION
`
`Axis Communications AB, Canon Inc., and Canon U.S.A., Inc.
`
`(“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes
`review of all claims (i.e., claims 1–4 and 6–36)1 of U.S. Patent
`No. 7,868,912 B2 & C1 (Ex. 1001, “the ’912 patent”). See 35 U.S.C. § 311.
`Patent Owner, Avigilon Fortress Corporation (“Patent Owner”) filed a
`Preliminary Response. Paper 9 (“PO Resp.”). In response to Patent
`Owner’s Preliminary Response, Petitioner filed a Reply to Patent Owner’s
`Preliminary Response (Paper 14, “Reply”) addressing Patent Owner’s
`argument that an asserted reference (i.e., Kellogg) is not a printed
`publication, to which Patent Owner filed a Sur-Reply to Petition for Inter
`Partes Review (Paper 18, “Sur-Reply”). Petitioner also filed a Motion to
`Correct the Florio Declaration under 37 C.F.R. § 42.104(c) (Paper 15,
`“Mot.”) to correct errors relating to the public availability of an asserted
`reference (i.e., Flinchbaugh I), to which Patent Owner filed an opposition
`(Paper 17, “Opp.”).
`Under 35 U.S.C. § 314(b), an inter partes review may not be
`instituted “unless . . . the information presented in the petition . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” Based upon the current
`record, we deny Petitioner’s Motion to Correct the Florio Declaration and
`determine Petitioner has not established a reasonable likelihood that it would
`prevail with respect to at least one of the claims challenged in the Petition.
`
`
`1 Claim 5 was canceled during reexamination. Ex. 1001, Reexamination
`Certificate, 1:19.
`
`2
`
`
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`IPR2019-00235
`Patent 7,868,912 B2 & C1
`
`Therefore, we deny institution of an inter partes review as to all challenged
`claims of the ’912 patent.
`
`A. Related Proceedings
`
`Concurrent with the instant Petition, Petitioner filed another petition
`for inter partes review of the ’912 patent as well as two separate petitions
`for inter partes review of related U.S. Patent No. 7,932,923. See Pet. 69;
`Canon Inc. et al. v. Avigilon Fortress Corp., Case IPR2019-00236 (PTAB
`Nov. 11, 2018) (Paper 1); Canon Inc. et al. v. Avigilon Fortress Corp., Case
`IPR2019-00311 (PTAB Nov. 11, 2018) (Paper 1); Canon Inc. et al. v.
`Avigilon Fortress Corp., Case PR2019-00314 (PTAB Nov. 11, 2018)
`(Paper 1). Additionally, we instituted two inter partes review proceedings
`of related U.S. Patent No. 8,564,661. See Pet. 69; Canon Inc. et al. v.
`Avigilon Fortress Corp., Case IPR2018-00138 (PTAB June 1, 2018) (Paper
`8); Canon Inc. et al. v. Avigilon Fortress Corp., Case IPR2018-00140
`(PTAB June 1, 2018) (Paper 8).
`
`B. The ’912 Patent (Ex. 1001)
`
`According to the ’912 patent, titled “Video Surveillance System
`Employing Video Primitives,” an object of the invention is to reduce the
`amount of video surveillance data so that analysis of the video surveillance
`data can be conducted. Ex. 1001, [54], 2:42–44. The “system extracts video
`primitives [from video data], extracts event occurrences from the video
`primitives using event discriminators,” and can “undertake a response, such
`as an alarm, based on the extracted event occurrences.” Id. at [57]. Video
`primitives include object descriptors that are observable attributes of an
`
`3
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`IPR2019-00235
`Patent 7,868,912 B2 & C1
`
`object in a video feed, such as the size, shape, position, speed, color, and
`texture of the object. Id. at 13:34–36.
`
`C. Claims
`
`Petitioner challenges all claims (i.e., claims 1–4, 6–36) of the ’912
`patent. Claims 1, 6, 9, 12, 18, 23–28, and 31–33 are independent. Claim 1
`is reproduced below.
`1. A video system comprising:
`a first processor which analyzes a video to determine
`attributes of objects detected in the video, the first processor
`being in communication with a first communications link to
`transfer the determined attributes over the communications link;
`and
`
`a second processor, separate from the first processor, in
`communication with the first communications link to receive
`the determined attributes transferred from the first processor
`over the first communications link, which determines a first
`event that is not one of the determined attributes by analyzing a
`combination of the received determined attributes and which
`provides, in response to a determination of the first event, at
`least one of an alert to a user, information for a report, and an
`instruction for taking an action,
`wherein the first processor determines attributes
`independent of a selection of the first event by the second
`processor, and
`wherein the second processor determines the first event
`without reprocessing the video analyzed by the first processor.
`D. Asserted Grounds of Unpatentability
`
`Petitioner argues the challenged claims are unpatentable based upon
`the following grounds:
`
`4
`
`
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`IPR2019-00235
`Patent 7,868,912 B2 & C1
`
`
`References
`Kellogg2 and Flinchbaugh I3
`Kellogg, Flinchbaugh I, and Brill5
`
`
`Basis
`§ 1034
`§ 103
`
`Challenged Claims
`1–4, 6–36
`1–4, 6–36
`
`II. ANALYSIS
`
`A. Petitioner’s Motion to Correct the Florio Declaration
`
`We first consider Petitioner’s Motion to Correct the Florio
`Declaration under 37 C.F.R. § 42.104(c). In its Motion, Petitioner moves to
`replace the Declaration of Emily R. Florio (Ex. 1007, “Original Florio
`Declaration”) with a corrected declaration (Exhibit 1043, “Corrected Florio
`Declaration”) without changing the Petition filing date. Mot. 6. The
`Original Florio Declaration was submitted with the Petition to support
`Petitioner’s argument that Flinchbaugh I was published by at least 1995 and
`is therefore prior art to the challenged claims. Pet. 3 (citing Ex. 1007 ¶¶ 27–
`
`
`2 Christopher James Kellogg, Visual Memory, Department of Electrical
`Engineering and Computer Science, Massachusetts Institute of Technology,
`May 1993. (Ex. 1003, “Kellogg”).
`3 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. (Ex. 1005,
`“Flinchbaugh I”).
`4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’912 has
`an effective filing date before September 16, 2012, the effective date of the
`applicable AIA amendments, we refer to the pre-AIA versions
`of §§ 102 and 103.
`5 Frank Brill et al., Event Recognition and Reliability Improvements for the
`Autonomous Video Surveillance System, Proceedings of a Workshop held in
`Monterey California, Nov. 20–23, 1998 pp. 267–283. (Ex. 1004, “Brill”).
`5
`
`
`
`IPR2019-00235
`Patent 7,868,912 B2 & C1
`
`31). Petitioner admits that statements and supporting exhibits in the Original
`Florio Declaration purported to relate to Flinchbaugh I, mistakenly address
`another reference by the same author (i.e., “Flinchbaugh II”), which is not
`addressed in the present proceeding. See Mot. 3. Petitioner contends the
`incorrect statements in the Original Florio Declaration resulted from “a
`clerical error in which Flinchbaugh II” was electronically provided to and
`used by Ms. Florio instead of the Flinchbaugh reference asserted in the
`present proceeding. See Mot. 3 (citing Ex. 1042 ¶ 3), 4 (stating the “error is
`clerical in nature, resulting from the wrong reference being used to prepare
`the declaration”). Petitioner also contends correction of the declaration
`would not prejudice Patent Owner because (1) the Petition’s citations to
`Flinchbaugh I are correct, (2) Patent Owner’s Preliminary Response fully
`responds to the presented grounds, (3) 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), and (4) Flinchbaugh I is “unquestionably
`published prior art.” Mot. 5–6 (citing Ex. 1043 ¶¶ 27–28, 30–31).
`Patent Owner opposes this Motion, arguing that the submission of a
`substantively different declaration discussing the alleged public availability
`of a completely different reference is not a clerical mistake that may be
`corrected under 37 C.F.R. § 42.104(c) and that allowing correction of the
`declaration would be unduly prejudicial. See Opp. 1–5.
`We agree with Patent Owner and deny Petitioner’s motion.
`A petition seeking inter partes review should be complete at the time
`it is filed in connection with the asserted grounds of unpatentability and the
`evidence and analysis offered in support thereof. See 35 U.S.C.
`§ 312(a)(3); 37 C.F.R. §§ 42.22, 42.104(b). We note that a petitioner may,
`
`6
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`IPR2019-00235
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`
`via motion, seek “to correct a clerical or typographical mistake in
`the petition.” 37 C.F.R. § 42.104(c). For example, the Board has in certain
`circumstances permitted a petitioner who inadvertently filed the wrong
`version of a prior art reference to substitute the correct reference and update
`citations. Netflix, Inc. v. Copy Protection, LLC, Case IPR2015–00921, slip
`op. at 3–5 (PTAB, July 30, 2015) (Paper 19) (permitting correction when,
`inter alia, the petition consistently quoted from the intended reference, the
`two references are similarly worded, and no material difference between the
`references was shown). Rule 104(c), however, does not give a petitioner
`recourse to make substantial alterations to the petition or the evidence
`supporting the petition under a theory of “correction.”
`Here, Petitioner does not seek to simply substitute a copy of a
`reference that was erroneously provided to Patent Owner as a result of a
`clerical error. Rather, Petitioner seeks to change its declarant’s testimony as
`to who published the asserted reference, the date the reference was
`published, whether the reference was copyrighted, as well as to submit new
`evidence to support its argument that the reference was publicly available.
`Compare Ex. 1007 ¶¶ 9–11, 27–31, Exs. E, F, with Ex. 1043 ¶¶ 9–11, 27–
`31, Exs. E, F1, F2.
`For example, the Original Florio Declaration states Flinchbaugh I
`bears a “copyright date of 1997” and “was published in the Proceedings of
`the 25th AIPR Workshop: Emerging Applications of Computer Vision, SPIE
`Vol. 2962. The Workshop was held in Washington, D.C., during October
`16–18, 1996 and the Proceedings was published by SPIE (The International
`Society for Optical Engineering).” Ex. 1007 ¶¶ 27–28. Petitioner also relies
`on Exhibits E and F attached to the Original Florio Declaration, which are
`
`7
`
`
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`IPR2019-00235
`Patent 7,868,912 B2 & C1
`
`MARC records “for the SPIE Proceedings” obtained from “the Library of
`Congress” and “the MIT Libraries,” to show Flinchbaugh I was published
`and publicly accessible before October 1999. Ex. 1007 ¶¶ 29–30.
`In contrast, the Corrected Florio Declaration does not allege
`Flinchbaugh I bears a copyright date or that Flinchbaugh I was published by
`SPIE in 1997 or presented at a workshop in 1996. Rather, the Corrected
`Florio Declaration contends Flinchbaugh I “was published in the
`Proceedings of the 10th Annual Joint Government-Industry Security
`Technology Symposium and Exhibition. The Symposium was held in
`Williamsburg, VA, during June 20–23, 1994, and the Proceedings was
`published by the American Defense Preparedness Association.” The
`Corrected Florio Declaration also does cite not to MARC records from either
`the Library of Congress or the MIT Libraries (Ex. 1007, Exs. E, F) but rather
`cites a different MARC record obtained from the British Library (Ex. 1043,
`Ex. E) as evidence that Flinchbaugh I “was received and cataloged by the
`British Library in February 1997” and that “dates stamped on the cover of
`the Proceedings” (Exhibit D) corroborate the information on the MARC
`card. Ex. 1043 ¶ 28. The Corrected Florio Declaration states that
`collectively Exhibit D and newly submitted Exhibit E show that
`Flinchbaugh I was published and accessible to the public years before
`October 1999. Ex. 1043 ¶ 28. The Corrected Florio Declaration also cites
`to two additional newly submitted exhibits to support the argument that
`Flinchburgh I was publicly accessible. See Ex. 1043 ¶¶ 11, 29–31, Exs. F1,
`F2.
`
`We determine that even if the errors in the Original Florio Declaration
`resulted from a clerical error, the proposed changes to Ms. Florio’s
`
`8
`
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`IPR2019-00235
`Patent 7,868,912 B2 & C1
`
`declaration testimony and the newly submitted exhibits themselves are not
`mere clerical errors that may be corrected under Rule 104(c). Rather, the
`proposed changes present substantive new arguments and evidence that
`Patent Owner had no opportunity to consider in drafting its Patent Owner
`Preliminary Response.
`We also disagree Patent Owner would not be harmed by allowing the
`correction because Petitioner could simply refile the Petition. See Mot. 5–6.
`The Petition was filed on November 12, 2018, which is one day before a rule
`changing the claim construction standard applied by the Board went into
`effect. See Changes to the Claim Construction Standard for Interpreting
`Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
`Fed. Reg. 51,340 (Nov. 13, 2018) (stating that claims challenged in Petitions
`filed on or before November 12, 2018 are to be construed under the
`“broadest reasonable interpretation” (BRI) standard but that claims
`challenged in Petitions filed on or after November 13, 2018 are to be
`construed using the claim construction standard that would be applied in a
`civil action under 35 U.S.C. § 282(b)). If we permit correction without
`changing the Petition’s filing date, we would apply the “broadest reasonable
`interpretation” standard when construing the challenged claims. If Petitioner
`refiles the Petition, however, we would construe the challenged claims under
`the standard applied in civil actions. Thus, refiling the Petition would result
`in the application of a different claim construction standard to the challenged
`claims, which may prejudice Patent Owner.
`For the foregoing reasons, we deny Petitioner’s Motion to Correct the
`Florio Declaration. Accordingly, in this Decision, we do not rely on the
`Corrected Florio Declaration but instead evaluate the Petition as supported
`
`9
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`IPR2019-00235
`Patent 7,868,912 B2 & C1
`
`by the Original Florio Declaration in determining whether to institute inter
`partes review.
`
`B. Prior Art Status of Flinchburg I
`
`Next, we determine whether Petitioner makes an adequate showing
`for purposes of institution that Flinchbaugh I is a prior art printed
`publication art under pre-AIA 35 U.S.C. § 102(b). Petitioner asserts the
`“earliest possible priority date for the ’912 patent is October 24, 2000” and
`that “Flinchbaugh was published in the Proceedings of the 10th Annual Joint
`Government-Industry Security Technology Symposium & Exhibition. The
`Symposium occurred in June 1994 and the Proceedings were published by at
`least 1995.” Pet. 2–3 (citing Ex. 1007 ¶¶ 27–31). Patent Owner responds,
`inter alia, that Petitioner has failed to prove that Flinchbaugh I is a prior art
`printed publication. PO Resp. 15–18.
`We agree with Patent Owner.
`Under 35 U.S.C. § 311(b), a petitioner in an inter partes review may
`only challenge the claims of a patent based on “prior art consisting of patents
`or printed publications.” For institution purposes, Petitioner has the burden
`to present information in the Petition to show a reasonable likelihood that it
`will prevail on the merits, which includes, inter alia, presenting information
`to show the asserted art is a patent or printed publication. 35 U.S.C.
`§ 314(a); see 37 C.F.R. § 42.108(c); see also, e.g., Symantec Corp. v. Trs. of
`Columbia Univ., Case IPR2015-00371, slip op. at 5, 9 (PTAB June 17,
`2015) (Paper 13) (denying institution where the Petition failed to include
`discussion or cite to evidence sufficient to show that the asserted reference
`was a prior art printed publication).
`
`10
`
`
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`IPR2019-00235
`Patent 7,868,912 B2 & C1
`
`
`Whether a reference qualifies as a “printed publication” involves a
`case-by-case inquiry into the facts and circumstances surrounding the
`reference’s disclosure to members of the public. In re Klopfenstein, 380
`F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference
`was made “sufficiently accessible to the public interested in the art” before
`the effective filing date. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009).
`A reference is considered “publicly accessible” upon a satisfactory showing
`that the document has been “disseminated or otherwise made available to the
`extent that persons interested and ordinarily skilled in the subject matter or
`art exercising reasonable diligence[] can locate it.” Kyocera Wireless Corp.
`v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (citation and internal quotation
`marks omitted).
`Here, Petitioner has failed to provide sufficient evidence that
`Flinchbaugh I is a prior art printed publication under pre-AIA 35 U.S.C.
`§ 102(b). As noted above, the Petition contends “Flinchbaugh [I] was
`published in the Proceedings of the 10th Annual Joint Government-Industry
`Security Technology Symposium & Exhibition. The Symposium occurred
`in June 1994 and the Proceedings were published by at least 1995.” Id. at 2–
`3 (citing Ex. 1007 ¶¶ 27–31). The evidence cited in the Petition, however,
`does not support these contentions because the cited evidence relates to
`Flinchbaugh II, not Flinchbaugh I, which is the reference asserted in the
`present proceeding. See Pet. 2–3 (citing Ex. 1007 ¶¶ 27–31). In the absence
`of further explanation or sufficient evidence in the Petition tending to show
`that Flinchbaugh I was disseminated or otherwise accessible to the public
`interested in the art before the effective filing date of the ’912 patent, we
`find that Petitioner fails to demonstrate a reasonable likelihood that
`
`11
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`IPR2019-00235
`Patent 7,868,912 B2 & C1
`
`Flinchbaugh I is prior art to the challenged claims.6 See e.g., Fluidmaster,
`Inc. v. Danco, Inc., IPR2017-00770, slip. op at 23–24 (PTAB July 28, 2017)
`(Paper 13) (finding petitioner failed to demonstrate an asserted reference is a
`printed publication and therefore has not demonstrated a reasonable
`likelihood that it will prevail in its assertion of unpatentability).
`
`C. Asserted Obviousness of Claims 1–4 and 6–36
`
`Each of the asserted grounds of unpatentability rely upon
`Flinchbaugh I. See Pet. 2 (asserting claims 1–4 and 6–36 are unpatentable
`over Kellogg and Flinchbaugh I or over Kellogg, Flinchbaugh I, and Brill).
`Because the evidence and argument presented does not show a reasonable
`likelihood that Flinchbaugh I is a printed publication, we find Petitioner has
`not shown a reasonable likelihood of prevailing with respect to at least one
`of the claims challenged in the petition.
`
`III. CONCLUSION
`
`Taking account of the information presented in the Petition and the
`Preliminary Response, and the evidence of record, we determine that
`Petitioner fails to demonstrate a reasonable likelihood of prevailing at trial as
`to any challenged claim. Accordingly, the Petition is denied, and no trial is
`instituted.
`
`
`6 Patent Owner also argues Petitioner fails to establish that Flinchbaugh I, as
`well as Kellogg, are printed publications because Ms. Florio “lacks personal
`knowledge” of the “particular library procedures.” PO Resp. 16–18. Given
`our determination regarding Flinchbaugh I, we do not reach these additional
`arguments.
`
`12
`
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`IPR2019-00235
`Patent 7,868,912 B2 & C1
`
`
`IV. ORDER
`
`It is hereby
`ORDERED that the Petition is denied as to all challenged claims of
`the ’912 patent, and no trial is instituted;
`
`
`
`13
`
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`IPR2019-00235
`Patent 7,868,912 B2 & C1
`
`
`For PETITIONER:
`
`C. Gregory Gramenopoulos
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`gramenoc@finnegan.com
`
`Joseph Calvaruso
`Richard Martinelli
`ORRICK HERRINGTON & SUTCLIFFE LLP
`jvcptabdocket@orrick.com
`rfmptabdocket@orrick.com
`
`
`For PATENT OWNER:
`
`Eugene Goryunov
`Michael Dokhanchy
`KIRKLAND & ELLIS LLP
`egoryunov@kirkland.com
`reza.dokhanchy@kirkland.com
`
`14
`
`
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