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: IPR2019-00314
`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: IPR2019-00314
`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
`
`IPR2019-00314
`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
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`documents. Petitioners are seeking to subpoena these libraries to address Patent
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`Owner’s challenge to the public accessibility of the asserted references. See, e.g.,
`
`Patent Owner’s Preliminary Response, Paper 9 at 18-29.
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`I.
`
`Background
`In this proceeding, Petitioners challenged U.S. Patent No. 7,932,923, relying
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`on Dimitrova (Ex. 1006) and Brill (Ex. 1004) as prior art for the asserted grounds.
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`In its Preliminary Response, Patent Owner argues that Dimitrova and Brill1 are not
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`prior art to the ’923 patent. As explained in Petitioners’ Reply, both Dimitrova and
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`Brill have clearly been shown to be prior art printed publications through the
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`evidence submitted with the Petition. This evidence includes, among other things,
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`1 Because the library of the University of Virginia (“UVA”) has agreed to
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`voluntarily provide a declaration regarding its cataloguing records for Brill,
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`Petitioners are not presently seeking authorization to compel UVA or other
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`libraries with information regarding the public accessibility of Brill.
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`1
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`
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`the regular publication of ACM journal that included Dimitrova, the actual
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`IPR2019-00314
`U.S. Patent No. 7,932,923
`
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`dissemination to and cataloging of Dimitrova and Brill by three libraries, and the
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`declaration of Ms. Emily Florio. Petitioners’ Reply, Paper 11 at 5.
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`Despite the evidence showing that Dimitrova and Brill are prior art
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`publications, Patent Owner continues to challenge the public accessibility of the
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`references. Patent Owner’s Sur-reply, Paper 12 at 1-5. Patent Owner does so
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`without presenting any evidence suggesting that either reference was not publicly
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`accessible or a prior art publication.
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`Although the evidence submitted with the Petition demonstrates the public
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`accessibility and prior art status of Dimitrova and Brill, and such evidence was
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`deemed sufficient by the Board for institution purposes (Paper 13), Petitioners seek
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`authorization to subpoena MIT and the LOC to obtain testimony and/or the
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`production of documents to further demonstrate the public accessibility of
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`Dimitrova (the additional evidence for Brill being collected without the need for a
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`subpoena). Such evidence will directly address Patent Owner’s argument that
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`“Petitioners were required, at a minimum, to put forth detailed evidence and
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`testimony from someone with direct personal knowledge, such as a librarian from
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`the UCLA library or the Library of Congress to explain what the stamps mean and
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`to explain the policies for indexing, shelving, or otherwise making public available
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`the reference and its contents to the public.” Paper 9 at 28 (emphases added); see
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`2
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`
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`IPR2019-00314
`U.S. Patent No. 7,932,923
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`also IPR2019-00311, Paper 9 at 22 (alleging the same for MIT). By addressing the
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`Patent Owner’s spurious complaints about the prior art status of Dimitrova, these
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`subpoenas will reduce the issues for final determination and allow the Board and
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`the parties to focus on the substantive merits of the Petition and instituted grounds.
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`II.
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`Identification of Testimony/Documents Sought and Efforts To-Date
`Pursuant to 37 C.F.R. § 42.52(a), Petitioners request authorization to issue a
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`subpoena for (1) testimony and/or documents from MIT establishing that
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`Dimitrova2 was received, catalogued, and made publicly accessible through the
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`MIT library system prior to October 1999 and (2) testimony and/or documents
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`from the LOC establishing that Dimitrova was received, catalogued, and made
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`publicly accessible through the LOC prior to October 1999.
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`Petitioners made efforts to obtain a declaration from MIT regarding
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`Dimitrova. Specifically, Petitioners asked MIT to provide a declaration
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`voluntarily. MIT responded during a phone call that MIT’s policy was to only
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`provide a declaration in response to a subpoena. Petitioners understand this to be
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`2 In IPR2019-00311, Petitioners also request a declaration from MIT and the LOC
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`establishing the date Kellogg and Flinchbaugh, which are relied on in that petition,
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`were publicly available.
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`3
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`
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`consistent with MIT’s policy regarding declarations and it has prompted requests
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`IPR2019-00314
`U.S. Patent No. 7,932,923
`
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`and subpoena authorizations from the Board in the past. See, e.g., IPR2016-01437
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`Paper 15 at 2; IPR2014-00562, Paper 22 at 3.
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`Petitioners also communicated with the LOC to obtain a declaration
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`voluntarily regarding the date stamped copy of Dimitrova3 obtained from the LOC.
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`The LOC has not indicated that it is willing to provide a declaration voluntarily.
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`Further, Petitioners are unaware of any such declarations that have been
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`voluntarily provided from the LOC for submission in an IPR proceeding.
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`III. The Requested Discovery is in the Interest of Justice
`Discovery in an inter partes review proceeding is limited to routine
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`discovery and additional discovery that is necessary “in the interest of justice.”
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`See 35 U.S.C. § 316(a)(5); Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case
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`IPR2012-00001, Paper 26 at 6-7 (P.T.A.B. Mar. 5, 2013) (precedential). The
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`Board considers the following factors in determining whether additional discovery
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`serves the interests of justice: (1) whether there is more than a possibility and a
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`mere allegation that useful information will be discovered; (2) whether the
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`proposed discovery seeks legal positions or the under lying basis for legal
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`3 Flinchbaugh, which IPR2019-00311 cites, also has a LOC date stamp.
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`4
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`
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`positions; (3) whether the requested information is available through other means;
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`IPR2019-00314
`U.S. Patent No. 7,932,923
`
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`(4) whether the instructions associated with the discovery are easily
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`understandable; and (5) whether the discovery is overly burdensome to answer.
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`Garmin at 6-7 (collectively “the Garmin Factors”). Because all the Garmin factors
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`favor the proposed discovery in this case, the Board should grant the requested
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`discovery.
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`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
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`directly address the public accessibility arguments made by Patent Owner. The
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`evidence obtained through the subpoenas will show the date Dimitrova was
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`received and made publicly accessible. This information is useful because it
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`directly responds to Patent Owner’s argument that evidence regarding public
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`accessibility must come from the libraries where the references were received and
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`shelved. Paper 9 at 28; see also IPR2019-00311, Paper 9 at 22 (alleging the same
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`for MIT).
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`The subpoenas are likely to result in the discovery of this evidence. The
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`evidence of record already shows that MIT has a catalogued copy of Dimitrova.
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`Moreover, MIT has provided publication evidence declarations for similar
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`references in response to a subpoenas in other IPRs. See, e.g., IPR2016-01437,
`
`5
`
`
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`Paper 21 (authorizing subpoena), Ex. 1027 (declaration); see also IPR2014-00200,
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`IPR2019-00314
`U.S. Patent No. 7,932,923
`
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`Ex. 1007. This evidences that there is more than a mere possibility that useful
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`information will be provided my MIT in response to the subpoena. Similarly, the
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`evidence already of record shows that the LOC has a copy of Dimitrova. Thus, the
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`LOC should have information regarding its practices for receiving and stamping its
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`holdings (including Dimitrova) with a LOC date stamp and how references in its
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`holdings are made publicly accessible.
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`B.
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`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
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`evidence from the MIT library and the Library of Congress for Dimitrova. The
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`proposed discovery does not seek or involve any legal positions.
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`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
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`reference in response to a subpoena. MIT is a library through which Kellogg was
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`made available to the public. Moreover, Patent Owner argues that testimony
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`directly from the library itself is required. Accordingly, Petitioners are not aware
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`of any other means for obtaining testimony and/or documents that respond to
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`Patent Owner’s arguments other than from MIT.
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`6
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`
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`With respect to the LOC, it has a date stamped copy of Dimitrova. Once
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`IPR2019-00314
`U.S. Patent No. 7,932,923
`
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`again, Patent Owner argues that testimony directly from the library itself is
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`required to demonstrate the LOC copy of Dimitrova evidences the publication of
`
`Dimitrova. Accordingly, Petitioners are not aware of any other means for
`
`obtaining testimony and/or documents that respond to Patent Owner’s arguments
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`other than from the LOC
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`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
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`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
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`testimony and/or documents sought regarding the references should be
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`understandable and are limited in nature.
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`Moreover, Petitioners have selected libraries that overlap with IPR2019-
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`00311. As explained in the motion for additional discovery in that proceeding,
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`MIT also has information regarding the public accessibility of Kellogg and
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`Flinchbaugh and the LOC has information regarding the public accessibility of
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`Flinchbaugh. Authorizing the requested discovery for MIT and the LOC should
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`7
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`
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`minimize the overall burden to the various libraries with discoverable information
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`IPR2019-00314
`U.S. Patent No. 7,932,923
`
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`because it maximizes the overlap between this proceeding and IPR2019-00311.
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`Exhibits A and B to this motion includes Petitioner’s proposed subpoena
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`requests and topics4 to MIT and the LOC, respectively. As evidenced by these
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`requests, the requested documents and testimony are easy to understand and not
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`overly burdensome.
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`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,
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`Petitioners quickly sought declarations from the relevant libraries and contacted
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`the Board to schedule a conference call to seek leave to file the instant motion.
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`V. Conclusion
`For the foregoing reasons, Petitioners respectfully request that the Board
`
`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 Dimitrova.
`
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`4 The proposed subpoena requests and topics also include those requested in
`
`IPR2019-00311 to avoid the need for MIT and the LOC to respond to multiple
`
`subpoenas.
`
`8
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`
`
`Dated: August 16, 2019
`
`
`
`
`
`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
`
`
`IPR2019-00314
`U.S. Patent No. 7,932,923
`
`
`Respectfully submitted,
`
`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.
`
`
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`9
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`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
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`received, stamped, catalogued, and/or shelved at the MIT Libraries;
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`• documents reflecting when of each Kellogg, Dimitrova, and Flinchbaugh was
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`indexed in and searchable through the MIT Libraries catalog system;
`
`•
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`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
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`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.
`
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`1
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`EXHIBIT B
`EXHIBIT B
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`
`
`
`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;
`
`•
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`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
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`
`
`IPR2019-00314
`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
`
`
`
`
`
`
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