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
`
`U.S. Patent No. 7,932,923
`Issue Date: April 26, 2011
`
`Title: Video Surveillance System Employing Video Primitives
`——————————
`PETITIONERS’ REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`——————————
`
`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
`
`U.S. Patent No. 7,932,923
`Issue Date: April 26, 2011
`
`Title: Video Surveillance System Employing Video Primitives
`——————————
`PETITIONERS’ REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`Case No. 2019-00311
`United States Patent No. 7,932,923
`
`Pursuant to the Board’s April 17, 2019 Order (Paper 10), Petitioners hereby
`
`reply to the arguments made in Patent Owner Avigilon’s April 9, 2019 Preliminary
`
`Response (Paper 9) regarding the publication status of Kellogg and Brill.
`
`I.
`
`Avigilon Misapplies the Board’s Inter Partes Review Evidentiary Rules
`Pre-Institution, the Board Must View the Evidence in the Light
`Most Favorable to the Petitioner
`The rules governing institution decisions expressly state that even if a patent
`
`owner submits testimonial evidence to contradict a petition “a genuine issue of
`
`material fact created by such testimonial evidence will be viewed in the light most
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`favorable to the petitioner” in deciding whether to institute. 37 C.F.R. § 42.108(c).
`
`This distinguishes Avigilon’s primary authority, Acceleration Bay, LLC v.
`
`Activision Blizzard Inc., in at least two ways. First, in Acceleration Bay, the
`
`Federal Circuit found that the Board did not abuse its discretion in its balance of all
`
`the evidence in rendering a Final Written Decision. 908 F.3d 765, 767 (Fed. Cir.
`
`2018). Second, the patent owner in Acceleration Bay submitted evidence during
`
`the trial expressly rebutting the evidence of publication and showing that it was not
`
`reliable. Id. at 773. Acceleration Bay does not support Avigilon’s arguments,
`
`which are being made pre-institution, and Avigilon provides no contrary evidence.
`
`1
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`
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`Case No. 2019-00311
`United States Patent No. 7,932,923
`Avigilon’s Arguments Are Improper Pre-Institution Evidence
`Objections
`Avigilon’s arguments concerning the admissibility of Petitioners’ evidence
`
`under the Federal Rules of Evidence, see e.g., POPR at 20 (citing FRE 602), are an
`
`improper attempt to couch evidentiary objections as sufficiency arguments to
`
`perform an end run around the Board’s clearly laid out procedures for objecting to
`
`and attempting to exclude evidence. The Board’s rules require that “[a]ny
`
`objection to evidence submitted during a preliminary proceeding must be filed
`
`within ten business days of the institution of the trial.” 37 C.F.R. § 42.64(b). The
`
`party relying on the objected-to evidence then may “respond to the objection by
`
`serving supplemental evidence.” Id. Later, the party objecting to the evidence
`
`may move to exclude it. 37 C.F.R. § 42.64(c).
`
`As other panels have found, pre-institution motions to exclude printed
`
`publications that allegedly “have not been authenticated” and are “inadmissible as
`
`hearsay” should be rejected and do not support a patent owner’s request to deny
`
`inter partes review. LKQ Corp. v. Clearlamp LLC, IPR2013-00020, Paper 17 at 3-
`
`4 (March 5, 2013). Avigilon’s POPR improperly “urges the Board to consider the
`
`evidentiary issues as part of [its] determination to institute a trial” and, therefore,
`
`must be denied because it seeks to deny Petitioners of their opportunity to address
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`Avigilon’s evidentiary objections, if necessary. Id.
`
`2
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`
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`Case No. 2019-00311
`United States Patent No. 7,932,923
`Avigilon’s Assertion That “Personal Knowledge” Is Required Is Wrong
`Avigilon’s cited authority does not support its assertion that someone with
`
`II.
`
`personal knowledge of the particular library’s practices is needed to show public
`
`availability. POPR at 20, 27. Both Hall and Acceleration Bay merely affirmed
`
`findings of publication where evidence of persons with personal knowledge was
`
`submitted—they did not dictate such evidence is required in all cases. In re Hall,
`
`781 F.2d 897, 897 (Fed. Cir. 1986); Acceleration Bay, 908 F.3d at 773. Indeed,
`
`neither Hall nor Acceleration Bay turned on the relationship between the
`
`declarant’s knowledge of the publishing library, and neither precludes competent
`
`evidence of a reference’s public availability being shown by a declaration of a
`
`professional librarian with knowledge of a library’s practices or a standardized
`
`cataloging system (such as the MARC system) widely used by libraries to record
`
`and make references accessible to the public. Ms. Florio’s testimony is in line with
`
`evidence routinely used by lawyers representing petitioners. Indeed, Patent
`
`Owner’s counsel has recently supported a petition with a law firm librarian
`
`declaration testifying without personal knowledge to the authenticity and
`
`publication dates of prior art references obtained from other libraries. See Cisco
`
`Sys., Inc. v. Chrimar Sys., Inc., IPR2019-00401, Ex. 1024 at ¶¶ 10, 16, 22, 29.
`
`Avigilon also did not dispute Ms. Florio’s testimony that Kellogg and Brill were
`
`publications in IPR2018-00138; see especially Ex. 1007 (Florio Declaration).
`
`3
`
`
`
`Case No. 2019-00311
`United States Patent No. 7,932,923
`III. Board Precedent Supports Ms. Florio’s Declaration
`Prior Board decisions have repeatedly found declarations from professional
`
`librarians sufficient to establish the public availability of a reference. In Symantec,
`
`the patent owner—like Avigilon here—argued that a reference was not shown to be
`
`publicly available because the librarian declarant “had no first-hand knowledge as
`
`to the public availability” of the reference “or the creation of the MARC record”
`
`for it. Symantec Corp. & Blue Coat Sys. LLC v. Finjan, Inc., IPR2015-01892,
`
`Paper 58 at 29 (March 15, 2017). The Board rejected these arguments, “credit[ing]
`
`Dr. Hall-Ellis’s testimony regarding the reliability of MARC records.” Id. at 31
`
`(emphasis added). While the Symantec Petitioner submitted post-institution
`
`evidence from a declarant with personal knowledge, the Board held, “even
`
`disregarding Petitioner’s Reply evidence,” Petitioner’s pre-institution declaration
`
`was sufficient to establish publication based on a MARC record without the
`
`declarant’s personal knowledge of the MARC record’s generation. Id.
`
`The cases Avigilon cites do not suggest otherwise and do not address the
`
`testimony of professional librarians based on library practices or MARC records.
`
`Ford Motor Co. v. Versata Dev. Grp., Inc., IPR2016-01019, Paper 9 at 6 (Oct. 4,
`
`2016) (technical expert relying on a current (non-prior art) website); Blue Calypso,
`
`LLC v. Groupon, Inc., 815 F.3d 1331, 134 (Fed. Cir. 2016) (upholding final
`
`4
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`
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`Case No. 2019-00311
`United States Patent No. 7,932,923
`determination finding no publication where there was no evidence a POSA would
`
`have known of the alleged prior art website or how to find it).
`
`IV. Petitioners Have Shown Kellogg and Brill Were Publicly Accessible
`Contrary to Avigilon’s assertions, a reference need not be “meaningfully
`
`indexed” to be a printed publication. POPR at 22-23, 28. Indeed, the Federal
`
`Circuit has expressly stated that this is not the standard. In re Lister, 583 F.3d
`
`1307, 1315 (Fed. Cir. 2009) (Library of Congress title search sufficient, despite no
`
`subject matter organization). Moreover, Petitioners showed multiple bases to
`
`support Kellogg’s public accessibility. Kellogg was accepted into the MIT library
`
`archives in 1993. Ex. 1003 at 1 (stamped “Jul 09 1993”); see also Ex. 1007 at ¶¶
`
`18-29 (supported by, e.g., MIT MARC record at pp. 107-110). Kellogg was also
`
`cited in Flinchbaugh (Ex. 1007 at ¶ 28), which would have led interested parties to
`
`finding the paper. See Blue Calypso, 815 F.3d at 1350 (citing Bruckelmyer v.
`
`Ground Heaters, Inc., 445 F.3d 1374, 1379 (Fed. Cir. 2006)).
`
`Also, the evidence shows Brill was distributed to at least three libraries
`
`before the critical date. Ex. 1004 at 2 (UMMU library “1998”), 3 (“8-13-99”); Ex.
`
`1007 ¶¶ 18-21, 30-33 (supported by, e.g., Virginia and NC State MARC records at
`
`pp. 131-134). This demonstrates the reference was published because it was
`
`actually disseminated. Acceleration Bay, 908 F.3d at 772. Avigilon has presented
`
`no contrary evidence, and its objections to Kellogg and Brill should be rejected.
`
`5
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`
`
`Dated: April 23, 2019
`
`Case No. 2019-00311
`United States Patent No. 7,932,923
`
`By: /C. Gregory Gramenopoulos/
`
` By: /Joseph A. Calvaruso/
`
`C. Gregory Gramenopoulos
`Reg. No. 36,532
`
`Joseph A. Calvaruso
`
` Reg. No. 28,287
`
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER LLP
`
` ORRICK, HERRINGTON & SUTCLIFFE
`LLP
`
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Tel. 202.408.4263; Fax 202.408.4400
`
`51 West 52nd Street
`
` New York, NY 10019-6142
` Tel. 212.506.5140; Fax 212.506.5151
`
`gramenoc@finnegan.com
`
`JVCPTABDocket@orrick.com
`
`Attorney for Petitioner
`Axis Communications AB
`
` Attorney for Petitioners
` Canon Inc. and Canon U.S.A., Inc.
`
`6
`
`
`
`Case No. 2019-00311
`United States Patent No. 7,932,923
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Petitioners’
`
`Reply to Patent Owner’s Preliminary Response was served on April 23, 2019, via
`
`email directed to counsel of record for Patent Owner at the following addresses:
`
`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
`
`Dated: April 23, 2019
`
`By: /Joseph A. Calvaruso/
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`7
`
`
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