Trials@uspto.gov
`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.
`
`
`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
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
