UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________________
`
`CANON INC. and 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 TO SUBMIT
`SUPPLEMENTAL INFORMATION PURSUANT TO 37 C.F.R. § 42.123(a)
`
`
`
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________________
`
`CANON INC. and 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 TO SUBMIT
`SUPPLEMENTAL INFORMATION PURSUANT TO 37 C.F.R. § 42.123(a)
`
`
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`
`LIST OF EXHIBITS
`
`Ex. 1001 U.S. Patent No. 7,932,923 (“the ’923 Patent”)
`Ex. 1002
`Prosecution History of the ’923 Patent
`Ex. 1003
`“Visual Memory” by Christopher James Kellogg (“Kellogg”)
`Ex. 1004
`“Event Recognition and Reliability Improvements for the
`Autonomous Video Surveillance System” by Frank Brill et al.
`(“Brill”)
`Ex. 1005 Declaration of John R. Grindon, D.Sc.
`Ex. 1006
`“Motion Recovery for Video Content Classification” by N. Dimitrova
`et al. (“Dimitrova”)
`Ex. 1007 Declaration of Emily R. Florio
`Ex. 1008
`February 29, 2012 Request for inter partes Reexamination of the ’923
`Patent
`Ex. 1009 May 23, 2012 Order Granting/Denying Request for inter partes
`Reexamination of the ’923 Patent
`Ex. 1010 May 23, 2012 Office Action in inter partes Reexamination of the ’923
`Patent
`Ex. 1011 August 27, 2012 Amendment and Reply in inter partes
`Reexamination of the ’923 Patent
`February 13, 2013 Decision Granting Petition to Terminate inter
`partes Reexamination Proceeding of the ’923 Patent
`Ex. 1013 May 23, 2013 Attachment to Request for ex parte Reexamination of
`the ’923 Patent
`June 17, 2013 Order Granting/Denying Request for ex parte
`Reexamination of the ’923 Patent
`Ex. 1015 August 30, 2013 Office Action in ex parte Reexamination of the ’923
`Patent
`
`Ex. 1012
`
`Ex. 1014
`
`i
`
`
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`Ex. 1016 October 30, 2013 Amendment and Reply in ex parte Reexamination
`of the ’923 Patent
`Ex. 1017 April 4, 2014 Final Office Action in ex parte Reexamination of the
`’923 Patent
`Ex. 1018 April 16, 2014 Amendment and Reply in ex parte Reexamination of
`the ’923 Patent
`Ex. 1019 April 30, 2014 Notice of Intent to Issue ex parte Reexamination
`Certificate of the ’923 Patent
`Ex. 1020 May 21, 2014 ex parte Reexamination Certificate of the ’923 Patent
`Ex. 1021 U.S. Patent No. 5,969,755 to Courtney (“Courtney”)
`Ex. 1022
`“Object-Oriented Conceptual Modeling of Video Data” by Young
`Francis Day et al., (“Day-I”)
`Ex. 1023 Declaration of Christopher James Bailey-Kellogg in IPR2018-00138
`and IPR2018-00140
`Ex. 1024 Applicant Response of June 11, 2012 in inter partes Reexamination of
`U.S. Patent No. 7,868,912 (“the ’912 Patent”)
`Ex. 1025 Decision Granting Petition to Terminate inter partes Reexamination
`of the ’912 Patent
`Ex. 1026 May 24, 2013 Attachment to Request for ex parte Reexamination of
`the ’912 Patent
`June 20, 2013 Order Granting/Denying Request for ex parte
`Reexamination of the ’912 Patent
`Ex. 1028 August 30, 2013 Office Action in ex parte Reexamination of the ’912
`Patent
`Ex. 1029 October 30, 2013 Amendment and Reply in ex parte Reexamination
`of the ’912 Patent
`Ex. 1030 March 27, 2014 Final Office Action in ex parte Reexamination of the
`’912 Patent
`
`Ex. 1027
`
`ii
`
`
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`Ex. 1031 April 16, 2014 Amend and Reply in ex parte Reexamination of the
`’912 Patent
`Ex. 1032 Notice of Intent to Issue ex parte Reexamination Certificate of the
`’912 Patent
`Ex. 1033 Declaration of Kenneth A. Zeger for the ex parte Reexamination of
`the ’923 Patent
`Ex. 1034 U.S. Patent No. 7,868,912
`Ex. 1035 U.S. Patent No. 8,564,661
`Ex. 1036 Curriculum Vitae of John R. Grindon, D.Sc.
`Ex. 1037 Merriam-Webster’s Collegiate Dictionary
`Ex. 1038 Declaration of Dr. Alan Bovik in IPR2018-00138 and IPR2018-00140
`Ex. 1039
`The New York Times October 2, 1999, Pro Basketball; McHale and
`Thompson Enter Hall of Fame with 3 Others, by Mike Wise
`Ex. 1041 Declaration of Guang-Yu Zhu
`Ex. 1042
`“Understanding MARC Bibliographic: Parts 1 to 6,” available at
`https://www.loc.gov/marc/umb/um01to06.html (last accessed August
`1, 2019)
`“Understanding MARC Bibliographic: Parts 7 to 10,” available at
`https://www.loc.gov/marc/umb/um07to10.html (last accessed August
`1, 2019)
`Ex. 1044 Nevenka Dimitrova et al., “Motion Recovery for Video Content
`Classification,” ACM Transactions on Information Systems, Vol. 13,
`No. 4, 408-439 (1995) from the MIT Libraries (Served But Not Filed)
`Ex. 1045 Bruce E. Flinchbaugh et al., “Autonomous Video Surveillance,” in
`Emerging Applications of Computer Vision, Vol. 2962, pp. 144-151
`(1997) from the Library of Congress
`Frank Brill et al., “Event Recognition and Reliability Improvements
`for the Autonomous Video Surveillance System” Proceedings of the
`
`Ex. 1043
`
`Ex. 1046
`
`iii
`
`
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`Image Understanding Workshop, Nov. 20-23, 1998, Vol. 1, pp. 267-
`283 from the University of Virginia Library
`Ex. 1047 Declaration of Katie Zimmerman filed in KAZ USA, Inc. v. Exergen
`Corp., Case IPR2016-01437, Exhibit 1027
`Ex. 1048 Declaration of Marilyn McSweeney filed in Yahoo! Inc. v. CreateAds
`LLC, Case IPR2014-00200, Exhibit 1007
`Ex. 1049 Declaration of Bryan Patrick Kasik
`Ex. 1050
`2019.08.09 Conference Call Transcript
`Ex. 1051
`Frank Brill et al., “Event Recognition and Reliability Improvements
`for the Autonomous Video Surveillance System” Proceedings of the
`Image Understanding Workshop, Nov. 20-23, 1998, Vol. 1, pp. 267-
`283 from the University of Wisconsin-Madison Memorial Library
`Email from the University of Wisconsin-Madison Memorial Library
`Ex. 1052
`Ex. 1053 Declaration of Rachel Watters (To Be Filed Subsequently, as
`Discussed Below)
`
`iv
`
`
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`Petitioners Canon Inc., Canon U.S.A., Inc., and Axis Communications AB
`
`(“Petitioners”) respectfully request that the Board admit the following exhibits as
`
`supplemental information pursuant to 37 C.F.R. § 42.123(a):
`
`1.
`2.
`
`3.
`
`4.
`
`the declaration of Guang-Yu Zhu (Exhibit 1041);
`webpages from the Library of Congress regarding the standard
`MARC format (Exhibits 1042 and 1043);
`a copy of the Flinchbaugh reference obtained from the Library of
`Congress (Exhibit 1045);
`a copy of the Brill reference obtained from the University of Virginia
`Libraries (Exhibit 1046) and a declaration from the University of
`Virginia (“UVA”) Library concerning the cataloging, shelving and
`public accessibility of Brill (Exhibit 1049);
`declarations from other IPR proceedings concerning MIT Libraries’
`shelving and indexing policies (Exhibits 1047 and 1048);
`a copy of the Brill reference from the University of Wisconsin-
`Madison Memorial Library (“UW”)(Exhibit 1051) and a forthcoming
`declaration from the University of Wisconsin – Madison Memorial
`Library concerning the public cataloging, shelving and public
`accessibility of Brill (Exhibit 1053).
`INTRODUCTION
`
`5.
`
`6.
`
`I.
`
`On November 12, 2018, Petitioners filed a petition for inter partes review
`
`challenging all claims of U.S. Patent No. 7,932,923 (“the ’923 Patent”). Paper 1.
`
`On April 9, 2019, Patent Owner filed its preliminary response to the Petition and
`
`argued that the Kellogg and Brill references relied on in the Petition were not prior
`
`art. See Paper 11 at 19-29. On July 8, 2019, the Board instituted review and held
`
`1
`
`
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`that the evidence of the prior art status of Kellogg and Brill presented in the
`
`Petition was sufficient to support institution. See Paper 13 at 21 and 32.
`
`On July 22, 2019, Patent Owner served Objections to Evidence under 37
`
`C.F.R. § 42.64(b)(1). See Paper 15. In those objections, Patent Owner objected to
`
`the Florio Declaration on the basis of Fed. R. Evid. 602 (personal knowledge) and
`
`901 (lacking authenticity). In response to Patent Owner’s objections, Petitioners
`
`served supplemental evidence (Exhibits 1041-1048) on August 5, 2019, further
`
`substantiating the evidence in the Florio Declaration and the prior art status of the
`
`asserted references.1
`
`Patent Owner, however, has not withdrawn its argument that Kellogg and
`
`Brill are not prior art. In view of that position, Petitioners seek to submit the
`
`supplemental information presented herein. On August 14, 2019, the Board
`
`authorized Petitioners to file this motion. See Paper 17.
`
`1 As further discussed below, three additional documents, besides those already
`
`served as supplemental evidence, are being requested to be submitted here. (1) Ex.
`
`1049, a declaration from the UVA library, which Petitioners were able to obtain
`
`without a subpoena, (2) Ex. 1051 a copy of Brill from the UW library; and (3) Ex.
`
`1053 a forthcoming declaration from the UW library regarding the publication
`
`status of Brill.
`
`2
`
`
`
`II.
`
`ARGUMENTS
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`
`A.
`
`Petitioners’ Motion Is Timely and Support the Just, Speedy and
`Inexpensive Resolution of the Current Proceedings
`
`As acknowledged by the Board, this motion is timely because Petitioners
`
`requested authorization to file the motion on August 2, 2019, within 30 days after
`
`the institution decision, pursuant to 37 C.F.R. § 42.123(a)(1). Paper 17 at 5; EMC
`
`Corp. v. Actividentity, Inc., IPR2017-00338, Paper 16 at 2 (Aug. 14, 2017).
`
`In addition to being timely submitted, the prompt entry of these exhibits will
`
`provide Patent Owner the benefit of being able to review and respond to the
`
`supplemental information in its Patent Owner Response, if it chooses to maintain
`
`its position that Kellogg and Brill are not prior art. The full consideration of this
`
`evidence now will further ensure “the just, speedy, and inexpensive resolution” of
`
`the proceeding pursuant to 37 C.F.R. § 42.1(b) because it will avoid piecemeal
`
`handling of these issues later in the case. Nikon Corp. v. ASML, IPR2018-00688,
`
`Paper 16 at 4 (Oct. 29, 2018).
`
`B.
`
`Petitioners’ Supplemental Information Is Relevant to a Claim for
`Which the Trial Has Been Instituted
`
`Exhibits 1041-1043, 1045-1049, 1051 and 1053 are undoubtedly relevant to
`
`the grounds at issue here because they corroborate and further demonstrate the
`
`prior art status of Kellogg (which is applied as prior art to the claims at issue in
`
`3
`
`
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`both Grounds 1 and 2), and Brill (which is applied as prior art to the claims in
`
`Ground 2). 37 C.F.R. § 42.123(a)(2).
`
`Patent Owner argues that Kellogg and Brill are not prior art as they were not
`
`publicly available prior to the priority date of the ’923 Patent. Patent Owner
`
`further argues the evidence of publication provided with the Petition is deficient
`
`because Ms. Florio lacks sufficient personal knowledge regarding the libraries
`
`from which Kellogg and Brill were obtained.
`
`While Petitioners disagree with Patent Owner’s contentions, the
`
`supplemental information presented here responds to Patent Owner’s unfounded
`
`challenge to the publication status of Kellogg and Brill by providing additional
`
`evidence of the publication of these references. It “does not change the grounds of
`
`unpatentability authorized in this proceeding, nor does it change the evidence
`
`initially presented in the [IPR] Petition to support those grounds of
`
`unpatentability.” Palo Alto Networks, Inc. v. Juniper Networks, Inc., IPR2013-
`
`00369, Paper 37 at 3 (Feb. 5, 2014). Indeed, consistent with Petitioner’s request
`
`here, the Board regularly allows the submission of additional publication evidence
`
`as supplemental information. See Apple Inc. v. VirnetX Inc., IPR2015-00810, Paper
`
`21 at 6 (Nov. 2, 2015) (granting supplemental information demonstrating public
`
`availability of a prior art reference and supporting evidence already of record);
`
`RayVio Corp. v. Nitride Semiconductors Co., Ltd., IPR2018-01141, Paper 22 at 3
`
`4
`
`
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`(Feb. 1, 2019); Mylan Pharma. Inc. et al. v. Bristol-Myers Squibb Co. et al.,
`
`IPR2018-00892, Paper 37 at 6 (Dec. 14, 2018); Nikon, IPR2018- 00688, Paper 16
`
`at 6.
`
`Below, Petitioner’s provide explanations of the specific relevance of each
`
`exhibit requested to be submitted as supplemental information.
`
`1.
`
`The University of Virginia Copy of Brill and Supporting
`Declaration
`
`Exhibit 1046 is a copy of the Brill reference obtained from the UVA
`
`Library. It is relevant because it confirms that Brill qualifies as a printed
`
`publication. The indicia on the face of Exhibit 1046, including the UVA Library
`
`stamp, publication date, and volume demonstrate that Brill was in fact distributed
`
`to the public prior to the priority date of the ’923 Patent. Moreover, this exhibit
`
`also demonstrates that Brill was in the collection of the UVA Library and,
`
`therefore, available to the public prior to the priority date of the ’923 Patent.
`
`Exhibit 1049 is a Declaration from Bryan Patrick Kasik, a Reference
`
`Librarian at the UVA Library. This declaration is also relevant because it further
`
`confirms the publication status of Brill. See EMC Corp. v. Intellectual Ventures I
`
`LLC, IPR2017-00429, Paper 23, 4 (PTAB Oct. 4, 2017) (the librarian’s declaration
`
`“provide[d] a more complete record of the public availability of [a prior art
`
`reference]”); Nikon, IPR2018-00688, Paper 16 (granting supplemental information
`
`5
`
`
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`of a librarian declaration to confirm the public accessibility of non-patent prior art
`
`relied upon in the petition). Moreover, as an employee of the UVA Library this
`
`evidence directly addresses Patent Owner’s argument that Ms. Florio lacks
`
`sufficient personal knowledge of the practices of the UVA Library. Paper 9 at 28.
`
`2.
`
`The UW Copy of Brill and Supporting Declaration
`
`Exhibit 1050 is a copy of Brill reference obtained from the UW Library. It
`
`is relevant because it confirms that Brill qualifies as a printed publication. The
`
`indicia on the face of Exhibit 1051, including the UW Library stamp, publication
`
`date, and volume demonstrate that Brill was in fact distributed to the public prior to
`
`the priority date of the ’923 Patent. Moreover, this exhibit also demonstrates that
`
`Brill was in the collection of the UW Library and, therefore, available to the public
`
`prior to the priority date of the ’923 Patent.
`
`Exhibit 1053 will be a Declaration from Rachel Watters of the UW Library.2
`
`This declaration is also relevant because it further confirms the publication status
`
`of Brill.
`
`2 In an effort to reduce the number of subpoenas necessary here, Petitioners were
`
`able locate the Ex. 1051 copy of Brill at the UW Library, which stated that it
`
`would provide a voluntary publication declaration. Unfortunately, Rachel Watters,
`
`the librarian that prepares these declarations at the UW Library, is unavailable
`
`6
`
`
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`The Library of Congress Copy of Flinchbaugh
`
`3.
`
`Flinchbaugh is relevant because it provides further evidence of the public
`
`availability of Kellogg. See Ex. 1007 ¶ 28. Exhibit 1045 is a copy of the
`
`Flinchbaugh reference obtained from the Library of Congress that includes a
`
`Library of Congress date stamp and volume that establishes the public
`
`dissemination of Flinchbaugh. Exhibit 1045 is thus relevant because it bolsters
`
`Ms. Florio’s testimony regarding the availability of Flinchbaugh, including the
`
`Library of Congress MARC record relating to it (see Ex. 1007 ¶ 42 and Ex. K),
`
`which in turn supports the publication status of Kellogg. See RayVio Corp. v.
`
`Nitride Semiconductors Co., Ltd., IPR2018-01141, Paper 22 at 3 (Feb. 1, 2019)
`
`(supplemental information relating to public accessibility of prior art references is
`
`relevant and does not change the grounds authorized); Palo Alto Networks, Inc.,
`
`IPR2013-00369, Paper 37 at 3.
`
`through August 22nd, 2019. See, Ex. 1052 (email from UW Library explaining Ms.
`
`Watters is unavailable). Thus, a copy of Ex. 1053 is not submitted herewith. But
`
`the Exhibit will be available in time for submission pursuant to the Board’s
`
`authorization.
`
`7
`
`
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`4. MIT Declarations from Other IPRs
`
`Exhibits 1047 and 1048 are declarations submitted in other IPR proceedings
`
`from MIT librarians (the “Zimmerman and McSweeny Declarations”). They
`
`explain the standard business practices and policies of the MIT Libraries for
`
`shelving and indexing MIT student thesis papers and other references. Because
`
`Kellogg is also an MIT thesis paper, they are relevant to the issue of Kellogg’s
`
`public accessibility.
`
`The Zimmerman and McSweeny Declarations thus provide supplemental
`
`information relevant to Kellogg and the grounds already instituted in this
`
`proceeding. See South-Tek Systems, LLC et al v. Engineered Corrosion Solutions,
`
`LLC, IPR2016-01351, Paper 17 at 4-5 (Jun. 15, 2017) (finding supplemental
`
`information of a librarian affidavit concerning cataloging practice at the library
`
`relevant to the proceeding).
`
`5.
`
`Library of Congress MARC Explanations
`
`Exhibits 1042 and 1043 are copies of webpages from the Library of
`
`Congress that explain what a MARC record is and what is means. This
`
`information concerning the MARC standard is relevant because Ms. Florio’s
`
`declaration includes an explanation of how MARC records work and an
`
`examination of MARC records for the Kellogg, Brill, and Flinchbaugh references
`
`8
`
`
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`in support of her testimony regarding public accessibility. See Ex. 1007 at ¶¶ 18-
`
`21, 23, 32-33, 42-44 (and supporting declaration Exhibits B-C, E-F, K-L).
`
`6.
`
`The Zhu Declaration
`
`The Zhu Declaration (Exhibit 1041) relates to and provides authentication
`
`for the supplemental information Petitioners seek to submit. Mr. Zhu’s testimony
`
`regarding each of the exhibits is thus relevant to and does not alter to the instituted
`
`grounds for the reasons discussed above with respect to the exhibit at issue.
`
`III. CONCLUSION
`
`For the foregoing reasons, Petitioners respectfully request that the Board
`
`permit Petitioners to submit Exhibits 1041-1043, 1045-1049, 1051 and 1053 as
`
`supplemental information in this proceeding.
`
`9
`
`
`
`Dated: August 16, 2019
`
`IPR2019-00311
`U.S. 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.
`
`10
`
`
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Petitioners’
`
`Motion to Submit Supplemental Information was served on August 16, 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: August 16, 2019
`
`By: /Joseph A. Calvaruso/
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`11
`
`
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