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: IPR2019-00311
`U.S. Patent No. 7,932,923
`
`______________________________
`
`PETITIONERS’ MOTION FOR AUTHORIZATION TO COMPEL
`TESTIMONY AND/OR DOCUMENTS
`
`______________________________
`
`
`
`______________________________
`
`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: IPR2019-00311
`U.S. Patent No. 7,932,923
`
`______________________________
`
`PETITIONERS’ MOTION FOR AUTHORIZATION TO COMPEL
`TESTIMONY AND/OR DOCUMENTS
`
`______________________________
`
`
`
`Pursuant to the Board’s August 14, 2019 Order (Paper 17) granting
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`
`
`authorization to file this motion, and pursuant to 37 C.F.R. §§ 42.52(a), Petitioners
`
`move for an order granting authorization to subpoena the M.I.T. Libraries (“MIT”)
`
`and the Library of Congress (“LOC”) to compel testimony and/or the production of
`
`documents. Petitioners are seeking to subpoena these libraries to address Patent
`
`Owner’s challenge to the public accessibility of the asserted references. See, e.g.,
`
`Patent Owner’s Preliminary Response, Paper 9 at 19-29.
`
`I.
`
`Background
`In this proceeding, Petitioners challenged U.S. Patent No. 7,932,923, relying
`
`on Kellogg (Ex. 1003) and Brill (Ex. 1004) as prior art for the asserted grounds,
`
`and Flinchbaugh (Exhibit J to the Florio Declaration (Ex. 1007)) as further
`
`evidence to show the public accessibility of Kellogg. In its Preliminary Response,
`
`Patent Owner argues that Kellogg and Brill1 are not prior art to the ’923 patent. As
`
`explained in Petitioners’ Reply, both Kellogg and Brill have clearly been shown to
`
`
`1 Because the library of the University of Virginia (“UVA”) has agreed to
`
`voluntarily provide a declaration regarding its cataloguing records for Brill,
`
`Petitioners are not presently seeking authorization to compel UVA or other
`
`libraries with information regarding the public accessibility of Brill.
`
`1
`
`
`
`be prior art printed publications through the evidence submitted with the Petition.
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`
`
`This evidence includes, among other things, indicia on the face of Kellogg (date
`
`stamp), cataloging of Kellogg at MIT, citation of Kellogg in another reference,
`
`Flinchbaugh, actual dissemination to and cataloging of Brill by three libraries, and
`
`the declaration of Ms. Emily Florio. Petitioners’ Reply, Paper 11 at 5.
`
`Despite the evidence showing that Kellogg and Brill (as well as
`
`Flinchbaugh) are prior art publications, Patent Owner continues to challenge the
`
`public accessibility of the references. Patent Owner’s Sur-reply, Paper 12 at 1-5.
`
`Patent Owner does so without presenting any evidence suggesting that either
`
`reference was not publicly accessible or a prior art publication.
`
`Although the evidence submitted with the Petition demonstrates the public
`
`accessibility and prior art status of Kellogg and Brill, and such evidence was
`
`deemed sufficient by the Board for institution purposes (Paper 13), Petitioners seek
`
`authorization to subpoena MIT and the LOC to obtain testimony and/or the
`
`production of documents to further demonstrate the public accessibility of Kellogg
`
`(the additional evidence for Brill being collected without the need for a subpoena).
`
`Such evidence will directly address Patent Owner’s argument that “Petitioners
`
`were required, at a minimum, to gather detailed evidence and testimony from
`
`someone with direct personal knowledge, such as an MIT librarian.” Paper 9 at
`
`22 (emphases added); see also IPR2019-00314, Paper 9 at 28 (alleging the same
`
`2
`
`
`
`for the Library of Congress). By addressing the Patent Owner’s spurious
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`
`
`complaints about the prior art status of Kellogg, these subpoenas will reduce the
`
`issues for final determination and allow the Board and the parties to focus on the
`
`substantive merits of the Petition and instituted grounds.
`
`II.
`
`Identification of Testimony/Documents Sought and Efforts To-Date
`Pursuant to 37 C.F.R. § 42.52(a), Petitioners request authorization to issue a
`
`subpoena for (1) testimony and/or documents from MIT establishing that Kellogg
`
`and Flinchbaugh were received, cataloged, and made publicly accessible through
`
`the MIT library system prior to October 1999, and (2) testimony and/or documents
`
`from the LOC establishing that Flinchbaugh2 was received, cataloged, and made
`
`publicly accessible through the LOC prior to October 1999.
`
`Petitioners made efforts to obtain a declaration from MIT regarding Kellogg
`
`and Flinchbaugh. Specifically, Petitioners asked MIT to provide a declaration
`
`voluntarily. MIT responded during a phone call that MIT’s policy was to only
`
`provide a declaration in response to a subpoena. Petitioners understand this to be
`
`
`2 In IPR2019-00314, Petitioners also request a declaration from MIT and the LOC
`
`establishing the date Dimitrova, an asserted reference in that proceeding, was
`
`publicly available.
`
`3
`
`
`
`consistent with MIT’s policy regarding declarations and it has prompted requests
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`
`
`and subpoena authorizations from the Board in the past. See, e.g., IPR2016-01437
`
`Paper 15 at 2; IPR2014-00562, Paper 22 at 3.
`
`Petitioners also communicated with the LOC to obtain a declaration
`
`voluntarily regarding the date stamped copy of Flinchbaugh3 obtained from the
`
`LOC. The LOC has not indicated that it is willing to provide a declaration
`
`voluntarily. Further, Petitioners are unaware of any such declarations that have
`
`been voluntarily provided from the LOC for submission in an IPR proceeding.
`
`III. The Requested Discovery is in the Interest of Justice
`Discovery in an inter partes review proceeding is limited to routine
`
`discovery and additional discovery that is necessary “in the interest of justice.”
`
`See 35 U.S.C. § 316(a)(5); Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case
`
`IPR2012-00001, Paper 26 at 6-7 (P.T.A.B. Mar. 5, 2013) (precedential). The
`
`Board considers the following factors in determining whether additional discovery
`
`serves the interests of justice: (1) whether there is more than a possibility and a
`
`mere allegation that useful information will be discovered; (2) whether the
`
`proposed discovery seeks legal positions or the under lying basis for legal
`
`
`3 Dimitrova, which IPR2019-00314 relies on, also has a LOC date stamp.
`
`4
`
`
`
`positions; (3) whether the requested information is available through other means;
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`
`
`(4) whether the instructions associated with the discovery are easily
`
`understandable; and (5) whether the discovery is overly burdensome to answer.
`
`Garmin at 6-7 (collectively “the Garmin Factors”). Because all the Garmin factors
`
`favor the proposed discovery in this case, the Board should grant the requested
`
`discovery.
`
`A. There is more than a possibility and a mere allegation that useful
`information will be discovered (Factor 1)
`The compelled testimony and/or documents that Petitioners seek will
`
`directly address the public accessibility arguments made by Patent Owner. The
`
`evidence obtained through the subpoenas will show the date Kellogg was received
`
`and made publicly accessible and the date Flinchbaugh, which cites to Kellogg,
`
`was distributed, received, and made publicly accessible. This information is useful
`
`because it directly responds to Patent Owner’s argument that evidence regarding
`
`public accessibility must come from the libraries where the references were
`
`received and shelved. Paper 9 at 22; see also IPR2019-00314, Paper 9 at 28
`
`(alleging the same for the Library of Congress).
`
`The subpoenas are likely to result in the discovery of this evidence. The
`
`evidence of record already shows that MIT has a catalogued copy of Kellogg.
`
`Moreover, MIT has provided publication evidence declarations for similar MIT
`
`5
`
`
`
`theses in response to a subpoenas in other IPRs. See, e.g., IPR2016-01437, Paper
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`
`
`21 (authorizing subpoena), Ex. 1027 (declaration); see also IPR2014-00200, Ex.
`
`1007. This evidences that there is more than a mere possibility that useful
`
`information will be provided my MIT in response to the subpoena. Similarly, the
`
`evidence already of record shows that the LOC has a copy of Flinchbaugh. Thus,
`
`the LOC should have information regarding its practices for receiving and
`
`stamping its holdings (including Flinchbaugh) with a LOC date stamp and how
`
`references in its holdings are made publicly accessible.
`
`B.
`
`The proposed discovery does not seek legal positions or the
`underlying basis for any legal positions (Factor 2)
`The proposed subpoenas seek cataloging and other public accessibility
`
`evidence from the MIT library and the Library of Congress for Kellogg and
`
`Flinchbaugh. The proposed discovery does not seek or involve any legal
`
`positions.
`
`C. The requested information is not available through other means
`(Factor 3)
`MIT has indicated to Petitioners that it will only provide a declaration for a
`
`reference in response to a subpoena. As an MIT thesis, MIT is the library through
`
`which Kellogg was made available to the public. Moreover, Patent Owner argues
`
`that testimony directly from the library itself is required. Accordingly, Petitioners
`
`6
`
`
`
`are not aware of any other means for obtaining testimony and/or documents that
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`
`
`respond to Patent Owner’s arguments other than from MIT.
`
`With respect to the LOC, it has a date stamped copy of Flinchbaugh. Once
`
`again, Patent Owner argues that testimony directly from the library itself is
`
`required to demonstrate the LOC copy of Flinchbaugh evidences the publication of
`
`Flinchbaugh. Accordingly, Petitioners are not aware of any other means for
`
`obtaining testimony and/or documents that respond to Patent Owner’s arguments
`
`other than from the LOC
`
`D. The discovery instructions are easy to understand and not overly
`burdensome (Factors 4 & 5)
`The requested testimony is straightforward and not overly burdensome to
`
`MIT or the LOC. MIT has provided declarations regarding public availability in
`
`the past for other proceedings and should be able to do so again in this proceeding
`
`without it being overly burdensome. See, e.g., IPR2016-01437 Ex. 1027
`
`(declaration). The same should be true for the LOC. Also, for both libraries, the
`
`testimony and/or documents sought regarding the references should be
`
`understandable and are limited in nature.
`
`Moreover, Petitioners have selected libraries that overlap with IPR2019-
`
`00314. As explained in the motion for additional discovery in that proceeding,
`
`MIT and the LOC also have information regarding the public accessibility of
`
`7
`
`
`
`Dimitrova, which is relied on in IPR2019-00314. Authorizing the requested
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`
`
`discovery for MIT and the LOC should minimize the overall burden to the various
`
`libraries with discoverable information because it maximizes the overlap between
`
`this proceeding and IPR2019-00314.
`
`Exhibits A and B to this motion includes Petitioner’s proposed subpoena
`
`requests and topics4 for MIT and the LOC, respectively. As evidenced by these
`
`requests, the requested documents and testimony are easy to understand and not
`
`overly burdensome.
`
`IV. Petitioner’s Request is Timely
`Petitioners’ request is timely, having been made less than one month after
`
`institution. There has been no undue delay or lack of diligence. After institution,
`
`Petitioners quickly sought declarations from the relevant libraries and contacted
`
`the Board to schedule a conference call to seek leave to file the instant motion.
`
`
`4 The proposed subpoena requests and topics also include those requested in
`
`IPR2019-00314 to avoid the need for MIT and the LOC to respond to multiple
`
`subpoenas.
`
`8
`
`
`
`V. Conclusion
`For the foregoing reasons, Petitioners respectfully request that the Board
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`
`
`grant its motion for authorization to subpoena the MIT Libraries and the Library of
`
`Congress to compel testimony and/or documents regarding the public accessibility
`
`of Kellogg and Flinchbaugh.
`
`
`
`Dated: August 16, 2019
`
`
`
`Respectfully submitted,
`
`
`
`By: /C. Gregory Gramenopoulos/
`C. Gregory Gramenopoulos
`Reg. No. 36,532
`
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER LLP
`
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Tel. 202.408.4263; Fax 202.408.4400
`
`gramenoc@finnegan.com
`
`Attorney for Petitioner
`Axis Communications AB
`
`
`By: /Joseph A. Calvaruso/
`
`Joseph A. Calvaruso
` Reg. No. 28,287
`
`
`
`
` ORRICK, HERRINGTON & SUTCLIFFE
`
` LLP
`
`51 West 52nd Street
`
` New York, NY 10019-6142
` Tel. 212.506.5140; Fax 212.506.5151
`
`
`
`JVCPTABDocket@orrick.com
`
` Attorney for Petitioners
` Canon Inc. and Canon U.S.A., Inc.
`
`
`
`9
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`
`REQUEST FOR THE PRODUCTION OF DOCUMENTS
`
`DOCUMENT REQUEST NO. 1
`
`Document(s) sufficient to show that each of Kellogg (Exhibit A), Dimitrova (Exhibit B),
`
`and Flinchbaugh (Exhibit C) were received and made available to the public by the MIT
`
`Libraries before October 1999. Responsive documents may include, for example:
`
`• documents reflecting the authenticity of Kellogg, Dimitrova, and Flinchbaugh as
`
`documents held in the MIT Libraries’ collection;
`
`• documents reflecting the date each of Kellogg, Dimitrova, and Flinchbaugh was
`
`received, stamped, catalogued, and/or shelved at the MIT Libraries;
`
`• documents reflecting when of each Kellogg, Dimitrova, and Flinchbaugh was
`
`indexed in and searchable through the MIT Libraries catalog system;
`
`•
`
`records of the MIT Libraries showing public access (e.g., checkouts and/or
`
`copies) to each of Kellogg, Dimitrova, and Flinchbaugh;
`
`• documents reflecting how the public could search for and/or access each of
`
`Kellogg, Dimitrova, and Flinchbaugh from the MIT Libraries.
`
`REQUEST FOR DEPOSITION
`
`DEPOSITION TOPIC NO. 1
`
`The receipt of Kellogg, Dimitrova, and Flinchbaugh by the MIT Libraries and how those
`
`references were made publicly available by MIT Libraries before October 1999, such as
`
`descriptions of the MIT Libraries’ standard business process for receiving, stamping, cataloging,
`
`shelving and making searchable theses and journals, and the corresponding authenticity and
`
`meaning of the documents and information produced in response to Document Request No. 1.
`
`
`
`1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT B
`EXHIBIT B
`
`
`
`
`REQUEST FOR THE PRODUCTION OF DOCUMENTS
`
`DOCUMENT REQUEST NO. 1
`
`Document(s) sufficient to show that each of Dimitrova (Exhibit A) and Flinchbaugh
`
`(Exhibit B) were received and made available to the public by the Library of Congress before
`
`October 1999. Responsive documents may include, for example:
`
`• documents reflecting the authenticity of Dimitrova and Flinchbaugh as
`
`documents held in the Library of Congress collection;
`
`• documents reflecting the date each of Dimitrova and Flinchbaugh was received,
`
`stamped, catalogued, and/or shelved at the Library of Congress;
`
`• documents reflecting when of each Dimitrova and Flinchbaugh was indexed in
`
`and searchable through the Library of Congress catalog system;
`
`•
`
`records of the Library of Congress showing public access (e.g., checkouts and/or
`
`copies) to each of Dimitrova and Flinchbaugh;
`
`• documents reflecting how the public could search for and/or access each of
`
`Dimitrova and Flinchbaugh from the Library of Congress.
`
`REQUEST FOR DEPOSITION
`
`DEPOSITION TOPIC NO. 1
`
`The receipt of Dimitrova, and Flinchbaugh by the Library of Congress and how those
`
`references were made publicly available by the Library of Congress before October 1999, such
`
`as descriptions of the Library of Congress’ standard business process for receiving, stamping,
`
`cataloging, shelving and making searchable theses and journals, and the corresponding
`
`authenticity and meaning of the documents and information produced in response to Document
`
`Request No. 1.
`
`1
`
`
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing Petitioners’ Motion
`
`for Authorization to Compel Testimony and/or Documents was served on
`
`August 16, 2019, via email directed to counsel of record for Patent Owner at the
`
`following:
`
`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: August 16, 2019
`
`By: /William Esper/
`William Esper
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
