Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 24
`
`Filed: September 6, 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 Motions to Compel Testimony and/or Documents
`37 C.F.R. § 42.52
`
`
`
`
`
`
`
`1 This Order applies to both listed cases. The parties may not use this style
`heading unless authorized.
`
`
`571.272.7822
`
`
` Paper No. 24
`
`Filed: September 6, 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 Motions to Compel Testimony and/or Documents
`37 C.F.R. § 42.52
`
`
`
`
`
`
`
`1 This Order applies to both listed cases. The parties may not use this style
`heading unless authorized.
`
`
`
`IPR2019-00311; IPR2019-00314
`Patent 7,932,923 B2 & C1
`
`
`I. INTRODUCTION
`Canon Inc., Canon U.S.A., Inc., and Axis Communications AB
`(“Petitioner”) filed a motion in IPR2019-00311 and in IPR2019-00134
`seeking authorization to compel testimony and/or documents pursuant to
`37 C.F.R. § 42.52(a). Paper 182, “Mot.” In both cases, Petitioner seeks
`authorization to file a subpoena to compel production of documents and
`testimony from:
`(1) the Massachusetts Institute of Technology Libraries (“MIT”)
`relating to certain references (i.e., Kellogg3, Dimitrova4, and Flinchbaugh5)
`sufficient to establish that Kellogg and Flinchbaugh were received and made
`available to the public by the MIT Libraries before October 1999 (Mot. 1,
`Ex. A), and
`(2) the Library of Congress sufficient to show Dimitrova and
`Flinchbaugh were received and made available to the public by the Library
`of Congress before October 1999 (Mot. 1, Ex. B).
`Petitioner states it is seeking to subpoena these libraries under
`37 C.F.R. § 42.52(a) to address Patent Owner’s arguments that testimony
`from a librarian with personal knowledge is required to establish the public
`
`
`2 Similar papers and exhibits having the same numbering were filed in each
`proceeding. For clarity and expediency, references to paper or exhibit
`numbers apply to both IPR2019-00311 and IPR2019-00314, unless
`indicated otherwise.
`3 Kellogg is a reference asserted to be prior art to the challenged claims in
`IPR2019-00311.
`4 Dimitrova is a reference asserted to be prior art to the challenged claims in
`IPR2019-00314.
`5 Flinchbaugh is a reference asserted to show the public accessibility of
`Kellogg because it “would have led interested parties to finding” Kellogg.
`See IPR2019-0311, Paper 11, 5.
`
`2
`
`
`
`IPR2019-00311; IPR2019-00314
`Patent 7,932,923 B2 & C1
`
`accessibility of the references. See Mot. 2. Patent Owner opposes.
`Paper 21, “Opp. to Mot.”
`For the reasons stated below we grant-in-part and deny-in-part
`Petitioner’s motions.
`
`II. ANALYSIS
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion under 37
`C.F.R. § 42.52(a) seeking to compel testimony or production of documents
`or things 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.
`See also Rules of Practice for Trials Before the Patent Trial and Appeal
`Board and Judicial Review of Patent Trial and Appeal Board Decisions;
`Final Rule, 77 Fed. Reg. 48,612, 48,622 (Aug. 14, 2012) (“A party in a
`contested case may apply for a subpoena to compel testimony in the United
`States, but only for testimony to be used in the contested case. See 35
`U.S.C. 24. Section 42.52(a) requires the party seeking a subpoena to first
`obtain authorization from the Board; otherwise, the compelled evidence
`would not be admitted in the proceeding.”).
`We have reviewed Petitioner’s motions, including the attached
`exhibits and determine Petitioner has sufficiently identified the witnesses by
`title and described the general relevance of the requested discovery as
`required by § 42.52(a). We are not persuaded by Patent Owner’s argument
`
`3
`
`
`
`IPR2019-00311; IPR2019-00314
`Patent 7,932,923 B2 & C1
`
`that Petitioner failed to identify the witnesses by name or title as required by
`§ 42.52(a)(1). Petitioner’s motions explain that for each identified library
`(i.e., the MIT library and the Library of Congress) a librarian can provide
`the requested testimony. See e.g., IPR2019-00311, Mot. 2 (stating the
`requested discovery is to address Patent Owner’s argument that Petitioner
`must provide “detailed evidence and testimony from someone with direct
`personal knowledge, such as an MIT librarian”) (emphasis modified);
`IPR2019-00318, Mot. 2 (stating the requested discovery will address Patent
`Owner’s argument that Petitioner must “at a minimum, to put forth detailed
`evidence and testimony from someone with direct personal knowledge, such
`as a librarian from . . . the Library of Congress to explain what the stamps
`mean and to explain the policies for indexing, shelving, or otherwise making
`public available the reference and its contents to the public”) (emphasis
`modified). Thus, Petitioner’s motions have sufficiently identified the
`witness as required by § 42.52(a)(1).
`Because Petitioner’s requests are in the nature of additional discovery,
`albeit from a third party, our Order also instructed Petitioner to explain in its
`motions why the requested discovery is in the interest of justice by
`addressing the factors set forth in Garmin International, Inc. v. Cuozzo
`Speed Technologies, LLC, IPR2012-00001, slip op. at 6–7 (PTAB
`Mar. 5, 2013) (Paper 26) (precedential). See Paper 17, 8.
`Petitioner asserts all five Garmin factors weigh in favor of discovery.
`Patent Owner argues four of these factors weigh against discovery. We
`address each factor in turn.
`
`4
`
`
`
`IPR2019-00311; IPR2019-00314
`Patent 7,932,923 B2 & C1
`
`
`Factor 1: More than a Possibility or Mere Allegation that
`Something Useful to the Proceeding Will be Found
`Regarding the first Garmin factor, we agree with Petitioner that
`evidence showing Kellogg and Flinchbaugh were publicly accessible before
`October 1999 is useful in the IPR2019-00311 proceeding because any such
`evidence is relevant to determining whether Kellogg qualifies as prior art to
`the challenged claims. See IPR2019-00311, Mot. 5. We also agree that
`evidence showing Dimitrova was publicly accessible before October 1999 is
`useful in the IPR2019-00314 proceeding because any such evidence is
`relevant to determining whether Dimitrova qualifies as prior art to the
`challenged claims. See IPR2019-00314, Mot. 5.
`Patent Owner argues Petitioner’s discovery requests are not “useful”
`because Petitioner seeks information about the public accessibility of
`Kellogg and Dimitrova before October 1999 yet only argued in its petitions
`that the Kellogg was publicly accessible in September 1993 (IPR2019-
`00311, Opp. to Mot. 3–5) and that Dimitrova was published October 1995
`(IPR2019-00314, Opp. to Mot. 3–5). We disagree with Patent Owner.
`Petitioner has asserted that both Kellogg and Dimitrova are prior art under
`pre-AIA 35 U.S.C. § 102(b) and, as such, the relevant date for demonstrating
`the prior art status of Kellogg and Dimitrova is October 24, 1999. 6
`We are persuaded Petitioner has sufficiently shown there is more than
`a mere possibility or allegation that MIT can provide testimony or
`documents tending to show the prior art status of Kellogg and Dimitrova.
`
`
`6 U.S. Patent No. 7,932,923 B2 (“the ’923 patent”) claims priority to an
`application filed October 24, 2000; therefore, a reference published prior to
`October 24, 1999 would qualify as prior art to the ’923 patent under pre-AIA
`§ 102(b).
`
`5
`
`
`
`IPR2019-00311; IPR2019-00314
`Patent 7,932,923 B2 & C1
`
`See IPR2019-00311, Mot. 5–6 (stating the evidence of record already shows
`MIT has a cataloged copy of Kellogg); IPR2019-00314, Paper 19, 1
`(submitting a copy of Dimitrova from MIT as Ex. 1044). Therefore, Factor
`1 weighs in favor of granting Petitioner’s requests for information regarding
`Kellogg and Dimitrova from the MIT libraries.
`We also are persuaded Petitioner has sufficiently shown there is more
`than a mere possibility or allegation that the Library of Congress can provide
`testimony or documents tending to show the public accessibility of
`Dimitrova and Flinchbaugh. See IPR2019-00311, Mot. 6 (stating the
`Library of Congress has a copy of Flinchbaugh); IPR2019-00314, Mot. 5–6
`(stating the Library of Congress has a copy of Dimitrova). Therefore, Factor
`1 weighs in favor of granting Petitioner’s requests for information regarding
`Flinchbaugh and Dimitrova from the Library of Congress.
`Petitioner, however, has not shown that the MIT libraries have a copy
`of Flinchbaugh. Therefore, Petitioner has not shown there is more than a
`mere possibility or mere allegation that useful information about
`Flinchbaugh will be discovered from MIT. Thus, Factor 1 weighs against
`granting Petitioner’s requests for information regarding Flinchbaugh from
`MIT.
`
`Factor 2: Litigation Positions and Underlying Basis
`Petitioner does not seek legal positions or the underlying basis for any
`legal positions. This factor supports granting Petitioner’s motions.
`
`Factor 3: Ability to Generate Equivalent Information by Other Means
`Petitioner asserts Kellogg is an MIT thesis made available to the
`public at the MIT Library and further represents that MIT has indicated that
`MIT will provide only a declaration for a reference in response to a
`
`6
`
`
`
`IPR2019-00311; IPR2019-00314
`Patent 7,932,923 B2 & C1
`
`subpoena. IPR2019-00311, Mot. 6. Petitioner also asserts that the Library
`of Congress has a date stamped copy of Flinchbaugh and Dimitrova and that
`attempts to obtain discovery from the Library of Congress without a
`subpoena have been unsuccessful. Mot. 7. Petitioner has described its
`attempts to obtain declarations from other libraries. See Mot. 1 n.1;
`Ex. 1050, 12:9–16.
`These assertions support a determination that the requested
`information is not available via other means. We are not persuaded by
`Patent Owner’s argument that a subpoena is not required because MIT
`librarians have voluntarily provided declarations in the past in other cases.
`Opp. to Mot. 6–7. We accept Petitioner’s representations that MIT has
`indicated a subpoena is required. Given Petitioner’s efforts to obtain
`discovery from other libraries, we also are not persuaded by Patent Owner’s
`argument that Petitioner has not shown that a declaration can be obtained
`from other libraries without a subpoena. See IPR2019-00314, Opp. to Mot.
`7.
`
`Therefore, Factor 3 weighs in favor of granting Petitioner’s motions.
`
`Factor 4: Easily Understandable Instructions
`We have reviewed Petitioner’s discovery requests (Mot. Exs. A, B)
`and agree with Petitioner that they are easily understandable. See Mot. 7–8.
`Patent Owner asserts the discovery requests asking for documents reflecting
`the authenticity of Kellogg, Dimitrova, and Flinchbaugh are not clear
`because they do not explain how the librarians would prove the authenticity
`of a document or even how a librarian would know how to analyze the legal
`question of authenticity. See IPR2019-00311, Opp. to Mot. 7–8; IPR2019-
`00314, Opp. to Mot. 8. The requests, however, clearly relate to the
`
`7
`
`
`
`IPR2019-00311; IPR2019-00314
`Patent 7,932,923 B2 & C1
`
`authenticity of the documents as documents held in the library’s collection
`(Mot. Exs. A, B), not to the legal authentication of a document. We are not
`persuaded by Patent Owner’s argument that because Petitioner’s requests
`ask for “[r]esponsive documents,” the instructions are over broad and,
`therefore, difficult to understand. Opp. to Mot. 8. Rather, the requests are
`not directed to all responsive documents, but are limited to documents
`“sufficient to show.” Mot. Exs. A, B. Therefore, Factor 4 favors granting
`Petitioner’s motions.
`
`Factor 5: Not Overly Burdensome to Answer
`We have reviewed Petitioner’s discovery requests (Mot. Exs. A, B)
`and agree with Petitioner that the requests are not overly burdensome as the
`required testimony is straightforward and limited in nature. See Mot. 7–8.
`For the reasons stated above, we are unpersuaded by Patent Owner’s
`arguments that (1) requests for “responsive documents” are overly
`burdensome, (2) the requests are not narrowly tailored to the relevant time
`period, and (3) Petitioner has not properly identified the witness as required
`by 37 C.F.R. § 42.52(a). See IPR2019-00311, Opp. to Mot. 8–9; IPR2019-
`00314, Opp. to Mot. 9–10.
`We also are not persuaded by Patent Owner’s argument that Petitioner
`is seeking “hypothetical and irrelevant information” that “would
`significantly burden Patent Owner by forcing it to engage in this meritless
`discovery process.” Opp. to Mot. 1. Rather, it appears Petitioner is seeking
`discovery to address arguments made by Patent Owner. Therefore, Factor 5
`favors granting Petitioner’s motions.
`
`8
`
`
`
`IPR2019-00311; IPR2019-00314
`Patent 7,932,923 B2 & C1
`
`
`Patent Owner’s Additional Arguments
`Patent Owner argues Petitioner’s motion should be denied because
`Petitioner inadequately authenticates the exhibits sought to be filed. Opp. to
`Mot. 9. We disagree. Issues relating to the authentication of exhibits are
`properly addressed by objections to evidence and motions to exclude.
`
`ORDER
`For the foregoing reasons, it is:
`ORDERED that Petitioner’s Motion for Authorization to Compel
`Testimony and/or Documents relating to Kellogg and Dimitrova from the
`MIT Libraries is granted;
`FURTHER ORDERED that Petitioner’s Motion for Authorization to
`Compel Testimony and/or Documents relating to Dimitrova and
`Flinchbaugh from the Library of Congress is granted;
`FURTHER ORDERED that Petitioner’s Motion for Authorization to
`Compel Testimony and/or Documents relating to Flinchbaugh from the MIT
`Libraries is denied;
`FURTHER ORDERED that Petitioner is authorized under
`35 U.S.C. § 24 to apply for a subpoena from the Clerk of the United States
`court for the district where testimony is to be taken in accordance with the
`above.
`
`
`
`
`9
`
`
`
`IPR2019-00311; 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
`
`
`
`
`10
`
`
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