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’ UNOPPOSED MOTION TO SUBMIT
`SUPPLEMENTAL INFORMATION PURSUANT TO 37 C.F.R. § 42.123(b)
`
`
`
`______________________________
`
`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’ UNOPPOSED MOTION TO SUBMIT
`SUPPLEMENTAL INFORMATION PURSUANT TO 37 C.F.R. § 42.123(b)
`
`
`
`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
`Ex. 1054 Declaration of Katherine Zimmerman relating to Kellogg (Pending
`Authorization)
`Ex. 1055 Declaration of Katherine Zimmerman relating to Dimitrova (Served
`But Not Filed)
`
`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 declaration of
`
`Katherine Zimmerman (the “Zimmerman Declaration”) (provisionally filed as
`
`Exhibit 10541) as supplemental information pursuant to 37 C.F.R. § 42.123(b).
`
`Patent Owner has stated that it does not oppose this motion.
`
`I.
`
`INTRODUCTION
`
`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 are not printed
`
`publications. See Paper 9 at 19-29. Despite a significant amount of information
`
`provided with the Petition establishing that Kellogg is in fact a printed publication,
`
`Patent Owner argued that Kellogg could not be shown to be a printed publication
`
`without “testimony from someone with direct personal knowledge, such as an MIT
`
`librarian.” Id. at 22. On July 8, 2019, the Board instituted review and held that the
`
`1 Petitioners have filed Exhibit 1054 for the Board’s consideration in deciding the
`
`present motion, and will not refer to it in any other papers in this proceeding unless
`
`this motion is granted.
`
`1
`
`
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`evidence of the prior art status of Kellogg and Brill presented in the Petition was
`
`sufficient to support institution. See Paper 13 at 21, 32.
`
`In response to the arguments Patent Owner first made in its Preliminary
`
`Response, Petitioners sought authorization to compel testimony or documents from
`
`MIT as additional evidence supporting the publication status of Kellogg that would
`
`satisfy Patent Owner’s “personal knowledge” demand. See Paper 18.
`
`Authorization to do so was granted by the Board on September 6, 2019. See Paper
`
`24 (the “Order Granting Authorization”).2
`
`Subsequently, Patent Owner repeated its argument that Kellogg and Brill are
`
`not printed publications in its October 9, 2019 Patent Owner Response. Paper 27
`
`at 47-56; see, e.g., id. at 48 (“proof of a prior-art reference’s public availability at a
`
`2 In the combined order applying to both IPR2019-00311 and IPR2019-00314, the
`
`Board granted Petitioners’ motion for authorization to compel testimony and/or
`
`documents relating to Kellogg from the MIT Libraries in IPR2019-00311 and
`
`relating to Dimitrova from the MIT Libraries in IPR2019-00314. See Paper 24.
`
`The Board also granted Petitioners’ motion for authorization to compel testimony
`
`and/or documents relating to Flinchbaugh to demonstrate the public accessibility
`
`of Kellogg from the Library of Congress in IPR2019-00311 and Dimitrova from
`
`the Library of Congress in IPR2019-00314. Id.
`
`2
`
`
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`library requires competent evidence from witnesses with personal knowledge of
`
`the particular library’s practices”).
`
`In the meantime, Petitioners requested issuance of the authorized subpoena
`
`to the MIT Libraries pursuant to 37 C.F.R. § 42.52(a) from the Clerk of the District
`
`Court of Massachusetts.3 The MIT Libraries provided the Zimmerman Declaration
`
`and its exhibits that are the subject of this motion in response. See Exhibit. 1054.
`
`Petitioners now submit this motion to admit the Zimmerman Declaration and its
`
`exhibits as supplemental information under 37 C.F.R. § 42.123(b), as authorized
`
`by a November 4, 2019 email from the Board.
`
`II.
`
`ARGUMENT
`
`Under 37 C.F.R. § 42.123(b), supplemental information may be admitted
`
`more than one month after the trial is instituted by way of a motion showing “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.” The present motion satisfies both of these requirements. As explained in
`
`more detail below, and acknowledged by the Board in its Order Granting
`
`3 Petitioners’ application to the Clerk of the District Court of Massachusetts to
`
`issue a subpoena to the MIT Libraries was filed under Docket No. 1:19-MC-
`
`91401-NMG-JCB.
`
`3
`
`
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`Authorization, both of these conditions for submitting the Zimmerman Declaration
`
`and the accompanying exhibits (Exhibit 1054) as supplemental information are
`
`satisfied. See Paper 24 at 4 and 7.
`
`The Board regularly allows the submission of additional publication
`
`evidence as supplemental information. See, e.g., 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 (Feb. 1, 2019); Mylan Pharm. Inc. et al. v. Bristol-Myers
`
`Squibb Co. et al., IPR2018-00892, Paper 37 at 6 (Dec. 14, 2018); Nikon v. ASML,
`
`IPR2018-00688, Paper 16 at 6 (Oct. 29, 2018). Consistent with the Board’s
`
`routine practice, here, the Zimmerman Declaration and the copies of the catalog
`
`records from the Barton Catalog relating to Kellogg attached thereto provide the
`
`specifics of the shelving and indexing practice at the MIT Libraries to further
`
`buttress the prior art status of Kellogg. And most significantly, the Zimmerman
`
`Declaration provides the very “personal knowledge” of an MIT librarian that
`
`Patent Owner continues to (incorrectly) argue is required to establish printed
`
`publication status, from the only source that such knowledge could possibly be
`
`obtained from. See Paper 27 at 47-56. Thus, there is a heightened reason that the
`
`4
`
`
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`Board’s routine practice of admitted this kind of evidence should be employed
`
`here.
`
`A.
`
`Petitioners’ Supplemental Information Reasonably Could Not
`Have Been Obtained Earlier
`
`Petitioners sought testimony and/or documents relating to Kellogg from the
`
`MIT Libraries voluntarily in this case, and were told that MIT would not provide
`
`any such information voluntarily. See Paper 18 at 6; Exhibit 1050 at 12-13.
`
`Petitioners thus could not have obtained a declaration relating to Kellogg from the
`
`MIT Libraries without first obtaining the Board’s authorization to issue a
`
`subpoena. The Board acknowledged this in its Order Granting Authorization,
`
`which was premised on “a determination that the requested information is not
`
`available via other means” and disagreed with Patent Owner’s assertion that
`
`Petitioners had “not shown that a declaration can be obtained from other libraries
`
`without a subpoena.” Paper 24 at 7.
`
`B.
`
`Consideration of Petitioners’ Supplemental Information Is in the
`Interests of Justice
`
`It is in the interest of justice for the Board to consider the supplemental
`
`information presented herein. Indeed, the Board issued its Order Granting
`
`Authorization only upon Petitioners’ successful showing that “the requested
`
`discovery is in the interest of justice” pursuant to the five Garmin factors. Paper
`
`24 at 4. As the Order also more specifically acknowledged, this evidence can
`
`5
`
`
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`address Patent Owner’s contention that “Petitioner must provide ‘detailed evidence
`
`and testimony from someone with direct personal knowledge, such as an MIT
`
`librarian.’” Id. Thus, if this information that could not have been earlier obtained
`
`without a subpoena is not submitted, Petitioners will not have a chance to fully
`
`address Patent Owner’s “personal knowledge” argument. It is in the interests of
`
`justice that Petitioners have the opportunity to do so.
`
`Additionally, Patent Owner will not be prejudiced by the filing of this
`
`information as supplemental information for at least three reasons. First, as the
`
`Board ruled in granting Petitioners’ motion for supplemental information under 37
`
`C.F.R. § 42.123(a), the supplemental information does not change the grounds of
`
`unpatentability authorized, nor does it change any evidence already presented in
`
`the Petition. Paper 23 at 4; Biomarin Pharms. Inc. v. Genzyme Therapeutic Prods.
`
`Ltd., IPR2013-00534, Paper 80 at 4–5 (Jan. 7, 2015); TCT Mobile (US) Inc. v.
`
`Telefonaktiebolaget LM Ericsson, IPR2015-01600, Paper 52 at 8 (Aug. 11, 2016).
`
`Second, Patent Owner will not be prejudiced because it has long had access to
`
`information relating to MIT’s shelving and indexing practices, through evidence
`
`already of record in the case, including the Declaration of Emily Florio (Exhibit
`
`1007), the Declaration of Katie Zimmerman from KAZ USA, Inc. v. Exergen Corp.,
`
`Case IPR2016-01437 (Exhibit 1047), and the Declaration of Marilyn McSweeney
`
`from Yahoo! Inc. v. CreateAds LLC, Case IPR2014-00200 (Exhibit 1048). See,
`
`6
`
`
`
`IPR2019-00311
`U.S. Patent No. 7,932,923
`e.g., Apple Inc. v. VirnetX Inc., IPR2015-00810, Paper 21, 6 (Nov. 2, 2015). The
`
`supplemental information here is merely additional “personal knowledge”
`
`evidence created specifically for this proceeding that corroborates MIT Libraries’
`
`shelving practices relating to Kellogg’s public availability. See id. Third, time
`
`remains in the schedule to give Patent Owner a meaningful opportunity to address
`
`the supplemental information in its forthcoming sur-reply paper. It is thus in the
`
`interest of justice to admit this new information as supplemental information in this
`
`proceeding.
`
`III. CONCLUSION
`
`For the foregoing reasons, Petitioners respectfully request that the Board
`
`admit Exhibit 1054 as supplemental information in this proceeding.
`
`7
`
`
`
`Dated: November 8, 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.
`
`8
`
`
`
`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 November 8, 2019, via
`
`email directed to counsel of record for Patent Owner at the following addresses:
`
`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
`Avigilon_Axis@kirkland.com
`
`Michael W. De Vries
`Kirkland & Ellis LLP
`333 Hope Street
`Los Angeles, CA 90071
`michael.devries@kirkland.com
`
`Dated: November 8, 2019
`
`By: /Joseph A. Calvaruso/
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`9
`
`
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