Trials@uspto.gov
`571-272-7822
`
`Paper 24
`Date: June 26, 2020
`
`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.
`
`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 Petitioner’s Request for Rehearing of Decision
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`

`

`IPR2019-00235
`Patent 7,868,912 B2 & C1
`
`I.
`
`INTRODUCTION
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`Axis Communications AB, Canon Inc., and Canon U.S.A., Inc.
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`(collectively “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an
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`inter partes review of claims 1–4 and 6–36 of U.S. Patent No. 7,868,912 B2
`
`& C1 (Ex. 1001, “the ’912 patent”) over certain references, including
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`Flinchbaugh I1 (Ex. 1005) and Kellogg (Ex. 1003). Petitioner also filed a
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`Declaration of Emily R. Florio (Ex. 1007, “Original Florio Declaration”)
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`supporting its Petition. Avigilon Fortress Corporation (“Patent Owner”)
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`filed a Preliminary Response (Paper 9, “Prelim. Resp.”). Petitioner then
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`filed an authorized Reply to Patent Owner’s Preliminary Response (Paper
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`14, “Reply”) and an authorized Motion to Correct the Florio Declaration
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`under 37 C.F.R. § 42.104(c) (Paper 15). We issued a Decision (Paper 19,
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`“Decision” or “Dec.”), in which we denied Petitioner’s Motion to Correct
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`the Florio Declaration and declined to institute inter partes review of the
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`’912 patent. See Dec. 5–12.
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`In the Decision, we determined Petitioner had failed to establish
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`sufficiently that Flinchbaugh I is prior art to the ’912 patent. Id. at 10–12.
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`In particular, we determined that neither the Petition nor the evidence cited
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`therein, which included the Original Florio Declaration, supported
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`Petitioner’s contention that Flinchbaugh I was disseminated or otherwise
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`accessible to the public before the effective filing date of the ’912 patent. Id.
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`at 11–12. Because each of the asserted grounds of unpatentability relied
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`upon Flinchbaugh I, we found Petitioner did not show a reasonable
`
`
`1 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”).
`
`2
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`

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`IPR2019-00235
`Patent 7,868,912 B2 & C1
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`likelihood of prevailing with respect to at least one of the claims challenged
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`in the petition, and we determined not to institute an inter partes review. Id.
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`at 12.
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`Petitioner filed a Request for Rehearing of our Decision. Paper 20
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`(“Rehearing Request” or “Reh. Req.”). In its Request, Petitioner contends
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`we erred by focusing on the Original Florio Declaration and by failing to
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`address the evidence of publication on the face of the Flinchbaugh I. Req.
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`Reh’g 1–2. Additionally, Patent Owner requested review by the
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`Precedential Opinion Panel (see Req. Reh’g. 3), which was denied
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`(Paper 23).
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`For the reasons set forth below, Petitioner’s Request for Rehearing is
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`denied.
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`II. ANALYSIS
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`A. Legal Standards
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`The party challenging a decision in a request for rehearing bears the
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`burden of showing the decision should be modified. See 37 C.F.R.
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`§ 42.71(d). The request for rehearing “must specifically identify all matters
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`the party believes the Board misapprehended or overlooked, and the place
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`where each matter was previously addressed.” Id. We review our Decision
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`denying institution under an abuse of discretion standard. See 37 C.F.R.
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`§ 42.71(c). An abuse of discretion may arise if based on an erroneous
`
`interpretation of law, if a factual finding is not supported by substantial
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`evidence, or if the decision represents an unreasonable judgment in weighing
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`relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281
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`(Fed. Cir. 2005).
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`Under 35 U.S.C. § 311(b), a petitioner in an inter partes review may
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`only challenge the claims of a patent based on “prior art consisting of patents
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`3
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`IPR2019-00235
`Patent 7,868,912 B2 & C1
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`or printed publications.” Whether a reference qualifies as a “printed
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`publication” involves a case-by-case inquiry into the facts and circumstances
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`surrounding the reference’s disclosure to members of the public. In re
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`Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is
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`whether the reference was made “sufficiently accessible to the public
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`interested in the art” before the effective filing date. In re Lister, 583 F.3d
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`1307, 1311 (Fed. Cir. 2009). A reference is considered “publicly accessible”
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`upon a satisfactory showing that the document has been “disseminated or
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`otherwise made available to the extent that persons interested and ordinarily
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`skilled in the subject matter or art exercising reasonable diligence[] can
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`locate it.” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir.
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`2008) (citation and internal quotation marks omitted).
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`After Petitioner filed its Request, the Board issued a Precedential
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`Opinion Panel Decision in Hulu LLC v. Sound View Innovations, LLC,
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`IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential). In that
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`decision, the panel held that at the institution stage, the petition must
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`identify, with particularity, evidence sufficient to establish a reasonable
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`likelihood that the reference was publicly accessible before the critical date
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`of the challenged patent and, therefore, there is a reasonable likelihood that
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`it qualifies as a printed publication. Id. at 13. Hulu explains there is no
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`presumption in favor of finding that a reference is a printed publication.
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`Rather, “the burden is on the petitioner to identify with particularity
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`evidence sufficient to establish a reasonable likelihood that the reference
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`was publicly accessible before the critical date of the challenged patent, and
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`therefore that there is a reasonable likelihood that it qualifies as a printed
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`publication.” Id. at 16. Hulu further states that “indicia on the face of a
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`reference, such as printed dates and stamps, are considered as part of the
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`4
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`IPR2019-00235
`Patent 7,868,912 B2 & C1
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`totality of the evidence” to determine that an asserted reference was publicly
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`accessible. Id. at 17–18.
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`In its Request for Rehearing, Petitioner contends the Decision
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`“focused on errors made in the original Florio Declaration” but that the
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`declaration “was not the only evidence of publication of the Flinchbaugh I
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`reference.” Req. Reh’g 4. Petitioner asserts “the Petition and the face of
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`Flinchbaugh I, to which it cites (Ex. 1005), establish the publication status of
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`Flinchbaugh I, at least for institution purposes, without considering the
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`Florio Declaration at all.” Id. (citing Pet. 2–3); see also id. at 2 (stating the
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`“Board did not address the evidence of publication on the face of the
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`Flinchbaugh I reference itself––which was expressly cited by Petitioners”
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`and that the “indicia on the face of Flinchbaugh I is strong evidence that
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`Flinchbaugh I qualifies as a printed publication”).
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`The Petition, however, does not contain any argument that indicia on
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`the face of Flinchbaugh I is evidence of publication. Petitioner directs us to
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`pages 2–3 of the Petition. Reg. Reh’g 4–5. These pages, however, merely
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`state that (1) Flinchbaugh I is one of the references relied upon to show
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`obviousness of the challenged claims (see Pet. 2) and that (2) “Flinchbaugh
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`was published in the Proceedings of the 10th Annual Joint Government-
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`Industry Security Technology Symposium& Exhibition. The Symposium
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`occurred in June 1994 and the Proceedings were published by at least 1995”
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`(Pet. 3 (citing Ex. 1007 ¶¶ 27–31)).
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`Patent Owner, in its Preliminary Response, argued that Petitioner’s
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`evidence was insufficient to establish that either the Flinchbaugh I or
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`Kellogg references were printed publications. See Prelim. Resp. 15–23.
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`Petitioner did not seek authorization to file a reply to present any arguments
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`or to identify with particularity any evidence to establish a reasonable
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`5
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`IPR2019-00235
`Patent 7,868,912 B2 & C1
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`likelihood that Flinchbaugh I qualifies as a printed publication. Instead,
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`Petitioner only requested authorization to file a reply to present arguments
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`and evidence as to why Kellogg qualified as a printed publication. See
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`Paper 13 (Order granting Petitioner’s request to file a Reply Brief and
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`Motion to Correct). Petitioner does not provide a persuasive reason why we
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`should now consider arguments that were not presented in either the Petition
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`or the Reply, but rather were presented for the first time in a Request for
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`Rehearing. Under the circumstances of this case, Petitioner has not shown
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`that we misapprehended or overlooked any matters there were previously
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`addressed.
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`Petitioner’s Request also contends the Decision “does not reference
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`the many prior PTAB decisions that have repeatedly held that, at the
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`institution stage, ‘conventional markers’ of publication are sufficient to
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`show that a prior art reference is a printed publication.” Req. Reh’g 5.
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`Petitioner cites to a number of decisions and contends the indicia of
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`Flinchbaugh I “is comparable to the publication information relied on in
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`these precedents.” Id. at 6.
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`Each of the cited decisions, however, contain evidence of publication
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`that was not presented here. For example, in Nobel Biocare Services AG v.
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`Instradent USA, Inc., 903 F.3d 1365, 1376 (Fed. Cir. 2018) the Federal
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`Circuit relied on declaration testimony that the catalog at issue was publicly
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`accessible at a conference. In Informatica Corp. v. Protegrity Corp.,
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`CBM2015-00021, Paper 14 at 29–30 (PTAB June 1, 2015), the Board cited
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`to declaration testimony that the reference was published in 1971 and noted
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`that “other indicia found in [the reference] suggest [the declarant] is likely
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`correct about its apparent publication.” In both Ericsson Inc. v. Intellectual
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`Ventures I LLC, IPR2014-00527, Paper 41 at 10–11 (PTAB May 18, 2015)
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`6
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`IPR2019-00235
`Patent 7,868,912 B2 & C1
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`and Provepharm Inc. v. Wista Laboratories Ltd., IPR2018-00182, Paper 16
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`at 17–18 (PTAB July 5, 2018), the Board relied on, inter alia, evidence that
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`the purported publishers were well-known and established. In Palo Alto
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`Networks Inc. v. Juniper Networks, Inc., IPR2013-00369, Paper 16 at 15–16
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`(PTAB Dec. 19, 2013), the Board relied on a bibliographic data sheet as
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`evidence that the reference was a technical report published by the
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`University of Colorado at Colorado Springs. In Toyota Motor Corp. v.
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`American Vehicular Sciences LLC, IPR2013-00417, Paper 14 at 33 n.6
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`(PTAB Jan. 13, 2014), the Board cited to a notation from a third party source
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`as evidence that the reference was published. Thus, we see no inconsistency
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`between those decisions and our decision in this proceeding.
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`III. CONCLUSION
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`For the foregoing reasons, Petitioner has not demonstrated we abused
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`our discretion, or that we misapprehended or overlooked any issue, in
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`denying institution of inter partes review in this case. Petitioner, therefore,
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`has not carried its burden of demonstrating that the Decision denying
`
`institution should be modified. See 37 C.F.R. § 42.71(d).
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`IV. ORDER
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`Accordingly, it is ORDERED that Petitioner’s Request for Rehearing
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`(Paper 20) is denied.
`
`7
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`

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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
`
`
`PATENT OWNER:
`
`Eugene Goryunov
`Michael Dokhanchy
`KIRKLAND & ELLIS LLP
`egoryunov@kirkland.com
`reza.dokhanchy@kirkland.com
`
`lb
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`8
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