`571.272.7822
`
`
` Paper No. 17
`
`Filed: August 14, 2019
`
`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
`Case IPR2019-003141
`Patent 7,923,923 B2 & C1
`____________
`
`
`Before GEORGIANNA W. BRADEN, KIMBERLY McGRAW, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`ORDER
`
`Granting Authorization to File Motion to Submit Supplemental Information
`and Motion to Compel Testimony and/or Production of Documents
`37 C.F.R. § 42.5
`37 C.F.R. § 42.52
`37 C.F.R. § 42.123(a)
`
`
`
`
`
`1 This order addresses issues that pertain to both cases. We exercise our
`discretion to issue one order to be filed in each case. The parties, however,
`are not authorized to use this style caption in subsequent papers.
`
`
`
`IPR2019-00311 (Patent 7,932,923 B2 & C1)
`IPR2019-00314 (Patent 7,932,923 B2 & C1)
`
`
`I. INTRODUCTION
`A conference call in the above proceedings was held on August 9,
`2019 among respective counsel for Canon Inc., Canon U.S.A., Inc., and Axis
`Communications AB (“Petitioner”) and Avigilon Fortress Corporation
`(“Patent Owner”) and Judges Braden, McGraw, and Kaiser. Petitioner
`arranged for a court reporter. A copy of the transcript has been filed as
`Exhibit 1050. The purpose of the call was to discuss Petitioner’s requests
`(1) for authorization to file a motion to file supplemental information under
`37 C.F.R. § 42.123(a) and (2) for authorization to file a motion to compel
`testimony and/or production of documents pursuant to 37 C.F.R. § 42.52(a).
`See Ex. 3002.
`For the reasons stated below we authorize Petitioner to file the
`requested motions and authorize Patent Owner to file oppositions thereto.
`
`1. Background
`In IPR2019-00311, Petitioner filed a petition asserting certain claims
`of U.S. Patent No. 7,932,923 B2 & C1 (“the ’923 patent”) are unpatentable
`over certain references (i.e., “Kellogg” and “Brill”). IPR2019-00311,
`Paper 1. In IPR2019-00314, Petitioner filed a petition asserting that certain
`claims of the ’923 patent are unpatentable over Brill in combination with
`another reference (i.e., “Dimitrova”). IPR2019-00314, Paper 1. In support
`of each petition, Petitioner also filed declarations by Emily R. Florio (Ex.
`10072) to support its allegations that the asserted references qualify as prior
`art. In IPR2019-00311, Ms. Florio asserts that the citation of Kellogg in
`another reference (i.e., “Flinchbaugh”) is further evidence of the public
`
`
`2 A different declaration by Ms. Florio was submitted in each proceeding as
`Exhibit 1007.
`
`2
`
`
`
`IPR2019-00311 (Patent 7,932,923 B2 & C1)
`IPR2019-00314 (Patent 7,932,923 B2 & C1)
`
`availability of Kellogg. See IPR2019-00311, Ex. 1007 ¶ 28. Patent Owner
`filed a Preliminary Response in each proceeding disputing, inter alia, the
`prior art status of the asserted references. IPR2019-00311, Paper 9;
`IPR2019-00314, Paper 9. Petitioner then filed an authorized Reply to
`address Patent Owner’s arguments that the asserted references in each
`proceeding are not printed publications (IPR2019-00311, Paper 11;
`IPR2019-00314, Paper 11), to which Patent Owner filed an authorized sur-
`reply (IPR2019-00311, Paper 12; IPR2019-00314, Paper 12).
`On July 8, 2019, we instituted a trial in each proceeding. IPR2019-
`00311, Paper 13; IPR2019-00314, Paper 13. Based on the evidence
`submitted with each petition, we determined Petitioner made a sufficient
`showing that the asserted references in each proceeding qualify as printed
`publications, for purposes of instituting a trial.
`Subsequently, Patent Owner served Petitioner objections to evidence
`in each proceeding under 37 C.F.R. § 42.64(b)(1), objecting to the Florio
`declarations under, inter alia, Federal Rules of Evidence 602 and 901 and
`alleging Petitioner has not “provided sufficient evidence to support a finding
`that [its] librarian declarant [Ms. Florio] has personal knowledge of the
`library shelving practices at MIT Libraries, University of Michigan Media
`Union, University of Virginia Library, North Carolina State University
`Library, University of California Los Angeles Science & Engineering
`Library, or the Library of Congress.” IPR2019-00311, Paper 15, 2;
`IPR2019-00314, 2. Petitioner states it served Patent Owner with evidence
`responsive to Patent Owner’s objections, as supplemental evidence.
`Ex. 3002.
`
`3
`
`
`
`IPR2019-00311 (Patent 7,932,923 B2 & C1)
`IPR2019-00314 (Patent 7,932,923 B2 & C1)
`
`
`2. Request for Authorization to Submit Supplemental Information
`Petitioner requests authorization to file the evidence that it had served
`on Patent Owner as supplemental evidence into the record as supplemental
`information under 37 C.F.R. § 42.123(a). See Ex. 3002. Petitioner states the
`information it seeks to submit relates to the publication status of the asserted
`references, an issue relevant to the proceeding, and includes an MIT Library
`copy of the Dimitrova reference, a Library of Congress copy of the
`Flinchbaugh reference, a University of Virginia Library copy of the Brill
`reference, MIT declarations from other proceedings discussing MIT’s
`shelving and indexing policies, and copies of webpages from the Library of
`Congress regarding the standard MARC format. Id. Petitioner contends
`submitting this information now will allow Patent Owner the opportunity to
`address this information in its Patent Owner Response, if Patent Owner
`chooses to continue its challenge to the publication status of the asserted
`references.
`Patent Owner opposes Petitioner’s request on the basis that the
`information sought to be submitted is not responsive to its objections as the
`information does not go to Ms. Florio’s personal knowledge. Patent Owner
`also states that Petitioner’s request is untimely because Patent Owner has not
`yet moved to exclude the references. Patent Owner also contends Petitioner
`has failed to show why the supplemental information could not have been
`obtained earlier.
`
`Analysis
`37 C.F.R § 42.123(a) provides that once a trial has been instituted, a
`party may file a motion to submit supplemental information in accordance
`with the following requirements. First, the request for the authorization to
`
`4
`
`
`
`IPR2019-00311 (Patent 7,932,923 B2 & C1)
`IPR2019-00314 (Patent 7,932,923 B2 & C1)
`
`file a motion to submit supplemental information must be made within one
`month of the date the trial is instituted, and second, the supplemental
`information must be relevant to a claim for which the trial has been
`instituted. See 37 C.F.R. §§ 42.123(a)(1), 42.123(a)(2).
`Here, Petitioner provides sufficient argument that the motion it seeks
`to file in each proceeding will satisfy both of these requirements.
`Petitioner’s request for authorization was made on August 2, 2019, which is
`within one month after July 8, 2019, the date that each trial was instituted.
`Also, Petitioner stated during the call that the supplemental information
`relates to the publication status of the asserted references, which is relevant
`to a claim for which trial has been instituted in each proceeding.
`We are unpersuaded by Patent Owner’s arguments that the
`information Petitioner seeks to submit is not responsive to Patent Owner’s
`objections or that submission of the information is untimely as Patent Owner
`has not yet filed a motion to exclude. Although the information that
`Petitioner seeks to submit was served on Patent Owner in response to Patent
`Owner’s Objections to Evidence, Petitioner is seeking to submit the material
`as supplemental information under 37 C.F.R. § 42.123(a) and is not seeking
`to submit the information to support the admissibility of previously filed
`evidence.
`We also are unpersuaded by Patent Owner’s argument that Petitioner
`has not shown that the supplemental information could not have been
`obtained earlier. Petitioner’s request for authorization was made within one
`month of the trial institution date, and therefore, Petitioner does not need to
`show that the why the supplemental information could not have been
`obtained earlier. See 37 C.F.R. § 42.123(b) (stating that if a party seeks to
`
`5
`
`
`
`IPR2019-00311 (Patent 7,932,923 B2 & C1)
`IPR2019-00314 (Patent 7,932,923 B2 & C1)
`
`submit supplemental information more than one month after the date the trial
`is instituted, the party must show why the supplemental information
`reasonably could not have been obtained earlier).
`Accordingly, we authorize Petitioner to file a motion to submit
`supplemental information under 37 C.F.R. § 42.123(a) in each proceeding,
`limited to ten (10) pages. We also authorize Patent Owner to file an
`opposition to each motion, also limited to ten (10) pages. The supplemental
`information shall be submitted as exhibits to the relevant motion but shall
`not be cited in any paper other than the motions and the oppositions
`authorized by this Order, unless and until the motions are granted or leave to
`do so is otherwise granted. If the motion is denied, the exhibits shall be
`expunged.
`
`3. Request for Authorization for Motion to Compel
`Petitioner seeks authorization to file a motion to subpoena certain
`entities and compel testimony and/or production of documents from those
`entities under 37 C.F.R § 42.52. Ex. 3002. Petitioner states that the entities
`include one or more of the MIT Libraries, University of Michigan Media
`Union, University of Virginia Library, North Carolina State University
`Library, University of California Los Angeles Science & Engineering
`Library, and the Library of Congress. Id. Petitioner states that it seeks to
`subpoena the various libraries to address Patent Owner’s assertion that
`Petitioner must obtain a declaration from the library where the reference was
`obtained in order to demonstrate the asserted references were published.
`Petitioner states it has reached out to the various libraries and the various
`libraries have either not responded, or have responded and stated that they
`will not submit a declaration without a subpoena.
`
`6
`
`
`
`IPR2019-00311 (Patent 7,932,923 B2 & C1)
`IPR2019-00314 (Patent 7,932,923 B2 & C1)
`
`
`Patent Owner responds that the information Petitioner seeks is not
`responsive to Patent Owner’s objections to the Florio declaration and Patent
`Owner has not yet moved to exclude the references that Petitioner is seeking
`to bolster. Patent Owner also states Petitioner cannot show more than a
`mere possibility that the information it seeks will result in responsive
`information.
`
`Analysis
`37 C.F.R. § 42.51(b)(2) states a party may move for additional
`discovery and, when appropriate, may obtain production of documents and
`things during authorized compelled testimony under 37 C.F.R. § 42.52.
`Section 42.52(a) requires the party seeking a subpoena to compel testimony
`or production of documents or things to file a motion for authorization with
`the Board. The motion must describe the general relevance of the testimony,
`document, or thing, and must, (1) in the case of testimony, identify the
`witness by name or title; and (2) in the case of a document or thing, the
`general nature of the document or thing. A party seeking additional
`discovery in an inter partes proceeding must demonstrate that the additional
`discovery is in the interest of justice. See 35 U.S.C. § 316(a)(5).
`Based on the arguments presented, we grant Petitioner’s request for
`authorization to file a motion to subpoena the identified libraries and compel
`testimony or production of documents from those entities under
`37 C.F.R § 42.52. Petitioner in its motion should comply with the
`requirements of 37 C.F.R § 42.52(a) and should (1) identify, as specifically
`as possible, what testimony and documents it seeks from each third party,
`(2) explain why such information is relevant and needed at this stage of the
`proceedings, and (3) describe all efforts made by Petitioner to date to obtain
`
`7
`
`
`
`IPR2019-00311 (Patent 7,932,923 B2 & C1)
`IPR2019-00314 (Patent 7,932,923 B2 & C1)
`
`the information it seeks outside the use of a subpoena. The motion should
`also explain why the additional discovery is in in the interest of justice by
`addressing the factors set forth in Garmin Int’l, Inc. v. Cuozzo Speed Techs.
`LLC, Case IPR2012-00001, slip op. at 6–7 (PTAB Mar. 5, 2013) (Paper 26)
`(precedential). Petitioner may file a motion in each proceeding, and the
`motion is limited to 10 pages.
`
`ORDER
`For the foregoing reasons, it is ORDERED that in each of the above
`proceedings,
`Petitioner is authorized to file a motion to submit supplemental
`information under 37 C.F.R. § 42.123(a) and Patent Owner is authorized to
`file an opposition;
`FURTHER ORDERED that the supplemental information shall be
`submitted as exhibits to the relevant motion but shall not be cited in any
`paper other than the motions and the oppositions authorized by this Order,
`and unless the motion is granted or leave to do so is otherwise granted;
`FURTHER ORDERED that Petitioner is authorized to file a motion to
`subpoena certain third party entities and compel testimony and production of
`documents or things from those entities under 37 C.F.R § 42.52 and Patent
`Owner is authorized to file an opposition;
`FURTHER ORDERED that Petitioner’s motions are due August 16,
`2019 and Patent Owner’s oppositions are due August 23, 2019; and
`FURTHER ORDERED that each of Petitioner’s motions and Patent
`Owner’s oppositions are limited to no more than 10 pages each.
`
`
`
`8
`
`
`
`IPR2019-00311 (Patent 7,932,923 B2 & C1)
`IPR2019-00314 (Patent 7,932,923 B2 & C1)
`
`For PETITIONER:
`
`C. Gregory Gramenopoulos
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`gramenoc@finnegan.com
`
`Joseph Calvaruso
`Richard Martinelli
`ORRICK HERRINGTON & SUTCLIFFE
`jvcptabdocket@orrick.com
`rfmptabdocket@orrick.com
`
`For PATENT OWNER:
`
`Eugene Goryunov
`Reza Dokhanchy
`KIRKLAND & ELLIS
`egoryunov@kirkland.com
`reza.dokhanchy@kirkland.com
`Avigilon_Axis@kirkland.com
`
`
`
`
`9
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`