Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 23
`
`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
`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 Motion to Submit Supplemental Information
`37 C.F.R. § 42.5
`37 C.F.R. § 42.123
`
`
`
`
`
`
`
`571.272.7822
`
`
` Paper No. 23
`
`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
`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 Motion to Submit Supplemental Information
`37 C.F.R. § 42.5
`37 C.F.R. § 42.123
`
`
`
`
`
`
`
`
`IPR2019-00311
`Patent 7,932,923 B2 & C1
`
`
`I. INTRODUCTION
`Canon Inc., Canon U.S.A., Inc., and Axis Communications AB
`(“Petitioner”) filed an authorized motion to submit supplemental information
`(Paper 19, “Mot.”), to which Avigilon Fortress Corporation (“Patent
`Owner”) filed an opposition (Paper 21, “Opp. to Mot.”).
`Petitioner states the supplemental information consists of evidence
`relating to the publication status of two references asserted in this
`proceeding (i.e., Kellogg and Brill), namely:
`1. the declaration of Guang-Yu Zhu (Exhibit 1041);
`2. webpages from the Library of Congress regarding the
`standard MARC format (Exhibits 1042 and 1043);
`3. a copy of the Flinchbaugh reference obtained from the Library
`of Congress (Exhibit 1045);
`4. a copy of the Brill reference obtained from the University of
`Virginia Libraries (Exhibit 1046) and a declaration from
`the University of Virginia (“UVA”) Library concerning
`the cataloging, shelving and public accessibility of Brill
`(Exhibit 1049);
`5. declarations from other IPR proceedings concerning MIT
`Libraries’ shelving and indexing policies (Exhibits 1047
`and 1048);
`6. a copy of the Brill reference from the University of
`Wisconsin-Madison Memorial Library (“UW”)(Exhibit
`1051) and a forthcoming declaration from the University
`of Wisconsin – Madison Memorial Library concerning
`the public cataloging, shelving and public accessibility of
`Brill (Exhibit 10531).
`
`Mot. 1.
`For the reasons stated below we grant Petitioner’s motion.
`
`
`1 In its motion, Petitioner explains it is unable to submit Exhibit 1053 with
`its motion because the librarian who prepares the declarations for the UW
`
`2
`
`
`
`IPR2019-00311
`Patent 7,932,923 B2 & C1
`
`
`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). Under 37 C.F.R.
`§ 42.123(a), a party may file a motion to submit supplemental information if
`the following requirements are met: (1) a request for authorization to file
`such motion is made within one month of the date the trial was instituted;
`and (2) the supplemental information must be relevant to a claim for which
`trial has been instituted.
`Petitioner’s request for authorization to submit supplemental
`information was made on August 2, 2019, which is within one month after
`July 8, 2019, the date that trial was instituted. Thus, Petitioner has satisfied
`the first requirement of § 42.123(a).
`Patent Owner argues Petitioner did not sufficiently identify Exhibits
`1049, 1051, and 1053 within one month of the date trial was instituted
`because Petitioner only requested authorization to submit the documents that
`Petitioner intended to serve on Patent Owner in response to Patent Owner’s
`objections to evidence and that these documents did not include Exhibits
`1049, 1051, and 1053. See Opp. to Mot. 3–6. We disagree. Petitioner’s
`email requesting authorization to file supplemental evidence also requested
`authorization to subpoena certain libraries and compel testimony and/or
`production of documents and to file any testimony or documents produced
`by any of these entities with the Board. Ex. 3002. During the conference
`call, Petitioner explained that the “supplemental information that we’re
`
`
`library is unavailable to execute the declaration until after August 22, 2019.
`Mot. 6–7 n.2. Exhibit 1053 was served on Patent Owner on August 23,
`2019.
`
`3
`
`
`
`IPR2019-00311
`Patent 7,932,923 B2 & C1
`
`looking to submit includes additional stamped copies of the references from
`various libraries showing that the references were actually disseminated.”
`Ex. 1050, 7:6–10. During the call Petitioner further explained that it is
`attempting to obtain testimony from somebody with personal knowledge as
`to the shelving status of each of the asserted references in order to address
`Patent Owner’s argument that a declaration from somebody with personal
`knowledge is necessary. See Ex. 1050, 11:3–19. Under these
`circumstances, we determine Petitioner sufficiently identified the
`information that it sought to submit as supplemental information.
`With respect to the second requirement of § 42.123(a), the
`supplemental information Petitioner seeks to admit generally relates to the
`publication status of Kellogg and Brill, which is a basis for the ground of
`unpatentability in this proceeding, and is therefore relevant to the challenges
`to the claims of the ’923 patent for which this trial was instituted.
`We are unpersuaded by Patent Owner’s argument that the information
`Petitioner seeks to submit is supplemental evidence, not supplemental
`information, and therefore submission of the information is untimely as
`Patent Owner has not yet filed a motion to exclude. Patent Owner does not
`persuasively explain, and we do not see, why evidence that may constitute
`supplemental information as well as supplemental evidence may not be
`submitted as supplemental information.
`We also are unpersuaded by Patent Owner’s arguments that Petitioner
`has not shown the supplemental information could not have been obtained
`earlier and that admitting the information now would allow Petitioner to
`bolster its position in a way that is not in the interest of justice. See Opp. to
`Mot. 5–8. As stated in our Decision to Institute, Petitioner provided
`
`4
`
`
`
`IPR2019-00311
`Patent 7,932,923 B2 & C1
`
`sufficient argument and evidence in its Petition that the asserted references
`constitute printed publications. See Paper 13. Patent Owner challenged the
`publication status of the asserted reference in its Preliminary Response. The
`supplemental information is being provided in anticipation Patent Owner
`may maintain its argument that the asserted references are not prior art. See
`Mot. 2.
`Nor do we agree with Patent Owner that admitting these documents,
`including Ex. 1053, will unfairly prejudice Patent Owner. See Opp. to Mot.
`4. Rather, entry of the exhibits will allow Patent Owner to review and
`address the exhibits in its response, in the event Patent Owner chooses to
`maintain its position that Kellogg and Brill are not prior art.
`Patent Owner also argues that Petitioner’s motion should be denied
`because the 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:
`Petitioner’s motion to submit Exhibits 1041–1043, 1045–1049, 1051,
`and 1053 as supplemental information is granted.
`
`
`
`5
`
`
`
`IPR2019-00311
`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
`
`
`
`
`6
`
`
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