`571.272.7822
`
`
` Paper No. 41
`
`Filed: March 4, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CANON INC., CANON U.S.A., INC., and
`AXIS COMMUNICATIONS AB,
`Petitioner,
`
`v.
`
`AVIGILON FORTRESS CORPORATION,
`Patent Owner.
`
`Case IPR2019-00311
`Patent 7,923,923 B2 & C1
`____________
`
`
`Before GEORGIANNA W. BRADEN, KIMBERLY McGRAW, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`ORDER
`
`Granting Motion to Submit Supplemental Information
`37 C.F.R. § 42.5
`37 C.F.R. § 42.123
`
`
`
`
`
`
`
`
`IPR2019-00311
`Patent 7,932,923 B2 & C1
`
`
`I. INTRODUCTION
`Canon Inc., Canon U.S.A., Inc., and Axis Communications AB
`(“Petitioner”) filed an authorized motion requesting the Board admit the
`declaration of Katherine Zimmerman (the “Zimmerman Declaration”),
`provisionally filed as Exhibit 1054, as supplemental information pursuant to
`37 C.F.R. § 42.123(b). (Paper 28, “Mot.”). Patent Owner does not oppose
`the motion. For the reasons stated below we grant Petitioner’s motion.
`Analysis
`Pursuant to 37 C.F.R. § 42.123(b), a motion to submit supplemental
`information filed more than one month after the trial is instituted must show
`why the supplemental information reasonably could not have been obtained
`earlier, and that consideration of the supplemental information would be in
`the interests of justice.
`Petitioner contends the Zimmerman declaration and its associated
`exhibits provide the “personal knowledge” of an MIT librarian that Patent
`Owner argues is required to establish the printed publication status of an
`asserted reference in this proceeding (i.e., Kellogg), provide specifics of the
`shelving and indexing practice at the MIT libraries, and further buttress the
`prior art status of Kellogg. Mot. 4 (citing Paper 27 (“PO Resp.”), 47–56).
`Petitioner argues this information reasonably could not have been obtained
`earlier because MIT would not provide this information voluntarily and that
`Board authorization to issue a subpoena was required in order to obtain the
`declaration. Id. at 5. Petitioner further asserts consideration of the
`supplemental information is in the interest of justice because the information
`addresses Patent Owner’s contention that Petitioner must provide detailed
`evidence and testimony from someone with direct personal knowledge, such
`
`2
`
`
`
`IPR2019-00311
`Patent 7,932,923 B2 & C1
`
`as an MIT librarian. Id. at 6 (citing Paper 24 (“Order Granting Motions to
`Compel Testimony and/or Documents”), 4). Petitioner further asserts Patent
`Owner will not be prejudiced by the filing of this information. Id. at 6–7.
`Given the above representations, we are persuaded Petitioner has
`made a sufficient showing that the requirements of 37 C.F.R. § 42.123(b) are
`satisfied. For these reasons, and because the Motion is unopposed,
`Petitioner’s Motion to Submit Supplemental Information is granted.
`ORDER
`
`Accordingly, it is hereby:
`ORDERED that Patent Owner’s Motion to File Supplemental
`Information is granted; and
`FURTHER ORDERED Exhibit 1054 is admitted into the record.
`
`3
`
`
`
`IPR2019-00311
`Patent 7,932,923 B2 & C1
`
`For PETITIONER:
`
`C. Gregory Gramenopoulos
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`gramenoc@finnegan.com
`Attorney for Petitioner Axis Communications AB
`
`
`Joseph Calvaruso
`Richard Martinelli
`ORRICK HERRINGTON & SUTCLIFFE
`jvcptabdocket@orrick.com
`rfmptabdocket@orrick.com
`Attorney for Petitioners Canon Inc. and Canon U.S.A., Inc.
`
`
`For PATENT OWNER:
`
`Reza Dokhanchy
`Adam R. Alper
`Akshay S. Deoras
`Michael De Vries
`KIRKLAND & ELLIS
`reza.dokhanchy@kirkland.com
`aalper@kirkland.com
`adeoras@kirkland.com
`michael.devries@kirkland.com
`
`
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`4
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