UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`Canon Inc., Canon U.S.A., Inc., and Axis Communications AB,
`
`Petitioners,
`
`v.
`
`Avigilon Fortress Corporation,
`
`Patent Owner.
`______________________
`
`Case No. IPR2019-00311
`U.S. Patent No. 7,932,923
`______________________
`
`PATENT OWNER’S SUR-REPLY TO PETITION FOR INTER PARTES
`REVIEW
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`Canon Inc., Canon U.S.A., Inc., and Axis Communications AB,
`
`Petitioners,
`
`v.
`
`Avigilon Fortress Corporation,
`
`Patent Owner.
`______________________
`
`Case No. IPR2019-00311
`U.S. Patent No. 7,932,923
`______________________
`
`PATENT OWNER’S SUR-REPLY TO PETITION FOR INTER PARTES
`REVIEW
`
`
`
`Patent Owner’s Sur-Reply to Petition
`IPR2019-00311
`
`PATENT OWNER’S EXHIBIT LIST
`Description
`
`Exhibit
`No.
`2001 Declaration of Michael W. De Vries in Support of Unopposed Motion
`to Appear Pro Hac Vice on Behalf of Patent Owner Avigilon Fortress
`Corporation.
`
`2002 Declaration of Adam R. Alper in Support of Unopposed Motion to
`Appear Pro Hac Vice on Behalf of Patent Owner Avigilon Fortress
`Corporation.
`
`2003 Declaration of Akshay S. Deoras s in Support of Unopposed Motion to
`Appear Pro Hac Vice on Behalf of Patent Owner Avigilon Fortress
`Corporation.
`
`2004
`
`2005
`
`37 C.F.R. § 1.132 Declaration of Kenneth A. Zeger (excerpt of U.S.
`Patent No. 7,868,912 Reexamination).
`
`Thomas Olson & Frank Brill, Moving Object Detection & Event
`Recognition Algorithms for Smart Cameras, 1 PROC. 1997 IMAGE
`UNDERSTANDING WORKSHOP 159-175 (1997).
`
`2006
`
`Jonathan D. Courtney, Automatic Video Indexing Via Object Motion
`Analysis, 30(4) PATTERN RECOGNITION 607-625 (1997).
`
`2007 U.S. Patent No. 6,628,835 to Brill et al.
`
`2008 Young Francis Day, et al, Spatio-Temporal Modeling of Video Data
`for On-Line Object-Oriented Query Processing, Proceedings of the
`International Conference on Multimedia Computing and Systems, 98-
`105 (1995).
`
`2009
`
`2010
`
`Second Supplemental Amendment, U.S. Patent No. 7,932,923 (Feb. 4,
`2011).
`IPR2018-00138; IPR2018-00140, Ex. 2009 (Grindon Dep. Transcript
`Aug. 15, 2018).
`
`2011 Declaration of Jennifer A. Babbitt.
`
`i
`
`
`
`Exhibit
`No.
`2012
`
`Patent Owner’s Sur-Reply to Petition
`IPR2019-00311
`
`Description
`
`SearchWorks Catalog Entry for Thomas Olson & Frank Brill, Moving
`Object Detection & Event Recognition Algorithms for Smart Cameras,
`1 PROC. 1997 IMAGE UNDERSTANDING WORKSHOP 159-175 (1997).
`
`2013
`
`Scanned Cover and Front Matter of Jonathan D. Courtney, Automatic
`Video Indexing Via Object Motion Analysis, 30(4) PATTERN
`RECOGNITION 607-625 (1997).
`
`2014 MARC Standards Wikipedia Search.
`
`2015 Declaration of Jennifer A. Babbitt for Sur-Reply.
`
`ii
`
`
`
`Patent Owner’s Sur-Reply to Petition
`IPR2019-00311
`
`Petitioners’ Reply fails to demonstrate that Kellogg and Brill are printed
`
`publications. Avigilon respectfully requests the Board deny institution.
`
`I.
`
`PETITIONERS’ 37 C.F.R. § 42.108(C) ARGUMENT IS INCORRECT
`Petitioners’ contention that it need only show a “genuine issue of fact” to
`
`suffice for institution is incorrect. It is Petitioners’ burden to demonstrate that “there
`
`is a reasonable likelihood that at least one of the claims challenged in the petition is
`
`unpatentable.” 37 C.F.R. § 42.108(c). It is also Petitioners’ burden to demonstrate
`
`that its references are printed publications. ServiceNow, Inc. v. Hewlett-Packard
`
`Co., IPR2015-00707, Paper 12 at 19-20 (Aug. 26, 2015). The language in §
`
`42.108(c) on which Petitioners rely is inapplicable here because that language relates
`
`only to “testimonial evidence presented in a patent owner preliminary response.”
`
`See, e.g., Fluidmaster, Inc. v. Danco, Inc., IPR2017-00770, Paper 17 at 9 (Oct. 4,
`
`2017) (original emphasis). Patent Owner presented no such testimonial evidence
`
`here. Petitioners’ attempt to distinguish Acceleration Bay also fails. That case
`
`discussed the standard for proving public availability, and did not condition its
`
`analysis on whether evidence was analyzed before or after institution.
`
`II.
`
`PRINTED PUBLICATION STATUS IS A SUBSTANTIVE ISSUE
`PROPERLY RAISED IN A PRELIMINARY RESPONSE
`Petitioners are incorrect that Patent Owner’s arguments concern the
`
`“admissibility” of the Florio declaration. Reply at 1. Patent Owner puts forth
`
`1
`
`
`
`Patent Owner’s Sur-Reply to Petition
`IPR2019-00311
`substantive arguments related to the sufficiency of Ms. Florio’s testimony, which is
`
`properly addressed in a preliminary response. Indeed, the Board has denied
`
`institution when a petitioner failed to provide sufficient evidence supporting a
`
`reference’s printed publication status. See e.g., Fluidmaster, IPR2017-00770, Paper
`
`13 at 24; ServiceNow, IPR2015-00707, Paper 12 at 19-20. Further, Petitioners’
`
`argument that Patent Owner’s counsel supported a petition in a different IPR with a
`
`law firm librarian fails at least because the declarant there testified to her personal
`
`knowledge of the cataloging practices at the relevant libraries. See Cisco Sys., Inc.
`
`v. Chrimar Sys., Inc., IPR2019-00401, Ex. 1024 ¶¶ 6-7. Lastly, Avigilon is not
`
`precluded from disputing the sufficiency of the Florio declaration because the issue
`
`was not litigated or adjudicated in IPR2018-00138, which also concerns a different
`
`patent. Paper 9 at 28-29.
`
`III. THE FLORIO DECLARATION IS INSUFFICIENT EVIDENCE
`Petitioners have not met their burden at least because Ms. Florio lacks
`
`personal knowledge of the practices at the relevant libraries and the MARC system,
`
`or at least has not explained such knowledge or the inconsistencies in her declaration.
`
`First, as previously explained in the Preliminary Response, Ms. Florio is
`
`explicit as to her lack of personal knowledge, qualifying her testimony with hedge
`
`words such as “would have been,” “relatively nominal amount of time,” and “at least
`
`before,” which the Board has previously found insufficient to support a petitioner’s
`
`2
`
`
`
`Patent Owner’s Sur-Reply to Petition
`IPR2019-00311
`contention regarding the public availability of a reference. See generally Ex. 1007;
`
`see Intel Corp. v. Alacritech, Inc., IPR2017-01395, Paper 8 at 6 (Nov. 22, 2017)
`
`(denying institution based on a lack of public availability where the declarant—who
`
`worked in the “Original Cataloguing Unit” at the relevant library—used “hedging
`
`words” like “as best I can determine”). And like in Alacritech, the Florio declaration
`
`“lacks any acknowledgement . . . that willful false statements are punishable by fine,
`
`imprisonment, or both.” Id. at 7; see 37 C.F.R. § 1.68. The same result in that case
`
`should apply here—the Board should give the Florio declaration no weight. Id.
`
`Second, Petitioners’ reliance on the Symantec IPR is misplaced. Reply at 4.
`
`In Symantec Corp. v. Finjan, Inc., the dispute was over whether a declarant needed
`
`to be “physical[ly] presen[t]” at the creation of a MARC record to show public
`
`availability. IPR2015-01892, Paper 58 at 30-31. Here, Patent Owner’s challenge
`
`does not rest on whether Ms. Florio was “physical[ly] presen[t]” at the creation of
`
`the MARC record. Rather, Patent Owner has demonstrated Ms. Florio’s lack of any
`
`personal knowledge regarding the practices at the relevant libraries.
`
`Further, in Symantec, the petitioner’s librarian could testify about the MARC
`
`standard because she was personally knowledgeable about it. IPR2015-01892, Ex.
`
`1006 ¶ 3 (“I have also given over one hundred presentations in the field, including
`
`several on . . . MARC standards.”), ¶ 6 (“I am fully familiar with a library cataloging
`
`standard known as . . . ‘MARC’”). Here, Ms. Florio’s declaration demonstrates no
`
`3
`
`
`
`Patent Owner’s Sur-Reply to Petition
`IPR2019-00311
`such knowledge of MARC standard. In fact, much of Ms. Florio’s explanation of
`
`the MARC standard appears to be copied nearly verbatim from a Wikipedia page.
`
`Compare Ex. 1007 ¶ 20 (“MARC uses a simple three-digit numeric code (from 001-
`
`999) to identify each field in the record. For example, field 245 lists the title of the
`
`work and field 260 lists publisher information.”) with Ex. 2014 at 2 (“MARC uses a
`
`simple three-digit numeric code (from 001-999) to identify each field in the record.
`
`MARC defines . . . field 245 as the title and field 260 as the publisher.”). Further,
`
`she does not state she personally retrieved the MARC records she discusses, and she
`
`merely asserts, without any explanation of what the OCLC database is, that “MIT
`
`does [OCLC’s] cataloguing.” Id. at ¶ 23.
`
`IV. PETITIONERS’ OTHER EVIDENCE IS ALSO INSUFFICIENT
`Even if the facts in the Florio declaration are accepted as true, Petitioners still
`
`fail to show that Kellogg and Brill are publicly accessible. See Paper 9 at 22-25.
`
`Petitioners incorrectly argue that In re Lister did not require a library reference to be
`
`meaningfully indexed to be a printed publication. 583 F.3d 1307, 1315 (Fed. Cir.
`
`2009). Rather, In re Lister dealt with whether a POSITA would choose search words
`
`leading to the title of the reference, which is how it was indexed. Id. Here,
`
`Petitioners have no response to the fact that a POSITA would not find the “Visual
`
`Memory” article based on title indexing. Paper 9 at 23-24. Purely hypothetical
`
`access is insufficient. ServiceNow, IPR2015-00707, Paper 12 at 18.
`
`4
`
`
`
`Patent Owner’s Sur-Reply to Petition
`IPR2019-00311
`Petitioners further argue that a handful of libraries received the references.
`
`Reply at 5. That alone is insufficient, especially for a reference not distributed in a
`
`regular publication, as receipt does not demonstrate public dissemination. ABS
`
`Global, Inc. v. Inguran, LLC, IPR2016-00927, Paper 33 at 17 (Oct. 2, 2017)
`
`(“[I]nformation identifying the library . . . does nothing more.”). A library’s date
`
`stamp alone also does not show the library made the reference publicly available.
`
`Id. at 15-17. For Kellogg, Petitioners only discuss the searchability of the title but
`
`not of the contents of the reference, nor do they discuss when the contents allegedly
`
`were made accessible. In re Lister, 583 F.3d at 1312 (“[W]e must . . . determine
`
`whether an interested researcher would have been sufficiently capable of finding the
`
`reference and examining its contents.”) (emphasis added). And citation by a thesis
`
`advisor cannot evince public availability because the thesis advisor has access to the
`
`thesis that the public does not. Paper 9 at 24-25. Even if it were the case that the
`
`public would be motivated to search for Kellogg, no evidence exists of how any such
`
`search function at the relevant library’s websites worked back in 1993 or at any time
`
`before the priority date of the ’923 patent aside from pure speculation from Ms.
`
`Florio. For Brill, Petitioners provide no evidence at all about any searching
`
`functionality or ways a POSITA would find the reference at any of the alleged
`
`university libraries other than Ms. Florio’s speculation that the references “would
`
`have been shelved shortly after” receipt by the libraries. Paper 9 at 28.
`
`5
`
`
`
`Patent Owner’s Sur-Reply to Petition
`IPR2019-00311
`
`Dated: April 30, 2019
`
`Respectfully submitted,
`
`By:
`
`/s/ Eugene Goryunov/
`Eugene Goryunov (Reg. No. 61,579)
`KIRKLAND & ELLIS LLP
`300 North LaSalle
`Chicago, IL 60654
`Telephone: 312-862-2000
`Facsimile: 312-862-2200
`
`Lead Counsel for Patent Owner
`Avigilon Fortress Corporation
`
`Reza Dokhanchy (Reg. No. 62,795)
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`Telephone: 415-439-1400
`Facsimile: 415-439-1500
`reza.dokhanchy@kirkland.com
`
`Akshay S. Deoras (pro hac vice)
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`Telephone: 415-439-1400
`Facsimile: 415-439-1500
`akshay.deoras@kirkland.com
`
`Adam R. Alper (pro hac vice)
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`Telephone: 415-439-1400
`Facsimile: 415-439-1500
`adam.alper@kirkland.com
`
`Michael W. De Vries (pro hac vice)
`KIRKLAND & ELLIS LLP
`333 South Hope Street
`Los Angeles, CA 90071
`Telephone: 213-680-8400
`Facsimile: 213-680-8500
`michael.devries@kirkland.com
`
`Back-Up Counsel for Patent Owner
`Avigilon Fortress Corporation
`
`6
`
`
`
`Patent Owner’s Sur-Reply to Petition
`IPR2019-00311
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing PATENT
`
`OWNER’S SUR-REPLY was served on April 30, 2019 via electronic service on
`
`lead and back up counsel:
`
`Axis Communications AB
`Lead Counsel
`
`Axis Communications AB
`Backup Counsel
`
`C. Gregory Gramenopoulos (Reg. No.
`36,532)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4263
`Fax: 202-408-4400
`Email: gramenoc@finnegan.com
`
`Kelly S. Horn (Reg. No. 70,657)
`Guang-Yu Zhu (Reg. No. 66,250)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-43131
`Fax: 202-408-4400
`Email: kelly.horn@finnegan.com
`Email: guang-yu.zhu@finnegan.com
`
`Canon Inc. and Canon U.S.A., Inc.
`Lead Counsel
`
`Canon Inc. and Canon U.S.A., Inc.
`Back-Up Counsel
`
`Joseph A. Calvaruso (Reg. No. 28,287)
`Orrick, Herrington, & Sutcliffe LLP
`2050 Main Street, Suite 1110
`Irvine, CA 92614-8255
`Telephone: 212-506-5140
`Facsimile: 949-567-6710
`Email: ipprosecution@orrick.com
`
`Richard F. Martinell (Reg. No. 52,003)
`Orrick, Herrington, & Sutcliffe LLP
`2050 Main Street, Suite 1110
`Irvine, CA 92614-8255
`Telephone: 212-506-5140
`Facsimile: 949-567-6710
`Email: ipprosecution@orrick.com
`
`7
`
`
`
`Dated: April 30, 2019
`
`Reza Dokhanchy (Reg. No. 62,795)
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`Telephone: 415-439-1400
`Facsimile: 415-439-1500
`reza.dokhanchy@kirkland.com
`
`Adam R. Alper (pro hac vice)
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`Telephone: 415-439-1400
`Facsimile: 415-439-1500
`adam.alper@kirkland.com
`
`Patent Owner’s Sur-Reply to Petition
`IPR2019-00311
`
` /s/ Eugene Goryunov
`Eugene Goryunov (Reg. No. 61,579)
`KIRKLAND & ELLIS LLP
`300 North LaSalle
`Chicago, IL 60654
`Telephone: 312-862-2000
`Facsimile: 312-862-2200
`eugene.goryunov@kirkland.com
`
`Akshay S. Deoras (pro hac vice)
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`Telephone: 415-439-1400
`Facsimile: 415-439-1500
`akshay.deoras@kirkland.com
`
`Michael W. De Vries (pro hac vice)
`KIRKLAND & ELLIS LLP
`333 South Hope Street
`Los Angeles, CA 90071
`Telephone: 213-680-8400
`Facsimile: 213-680-8500
`michael.devries@kirkland.com
`
`8
`
`
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