Avigilon Fortress Corporation

Patent Trials and Appeals Board

Jun 26, 2020

IPR2019-00235 (P.T.A.B. Jun. 26, 2020)

Trials@uspto.gov Paper 24
571-272-7822 Date: June 26, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

AXIS COMMUNICATIONS AB, CANON INC.,
and CANON U.S.A., INC.,
Petitioner,
v.
AVIGILON FORTRESS CORPORATION,
Patent Owner.

IPR2019-00235
Patent 7,868,912 B2 & C1

Before GEORGIANNA W. BRADEN, KIMBERLY McGRAW, and
JESSICA C. KAISER, Administrative Patent Judges.
McGRAW, Administrative Patent Judge.
DECISION
Denying Petitioner’s Request for Rehearing of Decision
Denying Institution of Inter Partes Review
37 C.F.R. § 42.71(d)

IPR2019-00235
Patent 7,868,912 B2 & C1
2
I. INTRODUCTION
Axis Communications AB, Canon Inc., and Canon U.S.A., Inc.
(collectively “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an
inter partes review of claims 1–4 and 6–36 of U.S. Patent No. 7,868,912 B2
& C1 (Ex. 1001, “the ’912 patent”) over certain references, including
Flinchbaugh I1 (Ex. 1005) and Kellogg (Ex. 1003). Petitioner also filed a
Declaration of Emily R. Florio (Ex. 1007, “Original Florio Declaration”)
supporting its Petition. Avigilon Fortress Corporation (“Patent Owner”)
filed a Preliminary Response (Paper 9, “Prelim. Resp.”). Petitioner then
filed an authorized Reply to Patent Owner’s Preliminary Response (Paper
14, “Reply”) and an authorized Motion to Correct the Florio Declaration
under 37 C.F.R. § 42.104(c) (Paper 15). We issued a Decision (Paper 19,
“Decision” or “Dec.”), in which we denied Petitioner’s Motion to Correct
the Florio Declaration and declined to institute inter partes review of the
’912 patent. See Dec. 5–12.
In the Decision, we determined Petitioner had failed to establish
sufficiently that Flinchbaugh I is prior art to the ’912 patent. Id. at 10–12.
In particular, we determined that neither the Petition nor the evidence cited
therein, which included the Original Florio Declaration, supported
Petitioner’s contention that Flinchbaugh I was disseminated or otherwise
accessible to the public before the effective filing date of the ’912 patent. Id.
at 11–12. Because each of the asserted grounds of unpatentability relied
upon Flinchbaugh I, we found Petitioner did not show a reasonable

1 Flinchbaugh et al., Autonomous Scene Monitoring System, Proceedings of
the Joint 10th Annual Government-Industry Security Technology
Symposium & Exhibition, June 20–23, 1994, pp. 205–209. (Ex. 1005,
“Flinchbaugh I”).
IPR2019-00235
Patent 7,868,912 B2 & C1
3
likelihood of prevailing with respect to at least one of the claims challenged
in the petition, and we determined not to institute an inter partes review. Id.
at 12.
Petitioner filed a Request for Rehearing of our Decision. Paper 20
(“Rehearing Request” or “Reh. Req.”). In its Request, Petitioner contends
we erred by focusing on the Original Florio Declaration and by failing to
address the evidence of publication on the face of the Flinchbaugh I. Req.
Reh’g 1–2. Additionally, Patent Owner requested review by the
Precedential Opinion Panel (see Req. Reh’g. 3), which was denied
(Paper 23).
For the reasons set forth below, Petitioner’s Request for Rehearing is
denied.
II. ANALYSIS
A. Legal Standards
The party challenging a decision in a request for rehearing bears the
burden of showing the decision should be modified. See 37 C.F.R.
§ 42.71(d). The request for rehearing “must specifically identify all matters
the party believes the Board misapprehended or overlooked, and the place
where each matter was previously addressed.” Id. We review our Decision
denying institution under an abuse of discretion standard. See 37 C.F.R.
§ 42.71(c). An abuse of discretion may arise if based on an erroneous
interpretation of law, if a factual finding is not supported by substantial
evidence, or if the decision represents an unreasonable judgment in weighing
relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281
(Fed. Cir. 2005).
Under 35 U.S.C. § 311(b), a petitioner in an inter partes review may
only challenge the claims of a patent based on “prior art consisting of patents
IPR2019-00235
Patent 7,868,912 B2 & C1
4
or printed publications.” Whether a reference qualifies as a “printed
publication” involves a case-by-case inquiry into the facts and circumstances
surrounding the reference’s disclosure to members of the public. In re
Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is
whether the reference was made “sufficiently accessible to the public
interested in the art” before the effective filing date. In re Lister, 583 F.3d
1307, 1311 (Fed. Cir. 2009). A reference is considered “publicly accessible”
upon a satisfactory showing that the document has been “disseminated or
otherwise made available to the extent that persons interested and ordinarily
skilled in the subject matter or art exercising reasonable diligence[] can
locate it.” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir.
2008) (citation and internal quotation marks omitted).
After Petitioner filed its Request, the Board issued a Precedential
Opinion Panel Decision in Hulu LLC v. Sound View Innovations, LLC,
IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential). In that
decision, the panel held that at the institution stage, the petition must
identify, with particularity, evidence sufficient to establish a reasonable
likelihood that the reference was publicly accessible before the critical date
of the challenged patent and, therefore, there is a reasonable likelihood that
it qualifies as a printed publication. Id. at 13. Hulu explains there is no
presumption in favor of finding that a reference is a printed publication.
Rather, “the burden is on the petitioner to identify with particularity
evidence sufficient to establish a reasonable likelihood that the reference
was publicly accessible before the critical date of the challenged patent, and
therefore that there is a reasonable likelihood that it qualifies as a printed
publication.” Id. at 16. Hulu further states that “indicia on the face of a
reference, such as printed dates and stamps, are considered as part of the
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Patent 7,868,912 B2 & C1
5
totality of the evidence” to determine that an asserted reference was publicly
accessible. Id. at 17–18.
In its Request for Rehearing, Petitioner contends the Decision
“focused on errors made in the original Florio Declaration” but that the
declaration “was not the only evidence of publication of the Flinchbaugh I
reference.” Req. Reh’g 4. Petitioner asserts “the Petition and the face of
Flinchbaugh I, to which it cites (Ex. 1005), establish the publication status of
Flinchbaugh I, at least for institution purposes, without considering the
Florio Declaration at all.” Id. (citing Pet. 2–3); see also id. at 2 (stating the
“Board did not address the evidence of publication on the face of the
Flinchbaugh I reference itself––which was expressly cited by Petitioners”
and that the “indicia on the face of Flinchbaugh I is strong evidence that
Flinchbaugh I qualifies as a printed publication”).
The Petition, however, does not contain any argument that indicia on
the face of Flinchbaugh I is evidence of publication. Petitioner directs us to
pages 2–3 of the Petition. Reg. Reh’g 4–5. These pages, however, merely
state that (1) Flinchbaugh I is one of the references relied upon to show
obviousness of the challenged claims (see Pet. 2) and that (2) “Flinchbaugh
was published in the Proceedings of the 10th Annual Joint Government-
Industry Security Technology Symposium& Exhibition. The Symposium
occurred in June 1994 and the Proceedings were published by at least 1995”
(Pet. 3 (citing Ex. 1007 ¶¶ 27–31)).
Patent Owner, in its Preliminary Response, argued that Petitioner’s
evidence was insufficient to establish that either the Flinchbaugh I or
Kellogg references were printed publications. See Prelim. Resp. 15–23.
Petitioner did not seek authorization to file a reply to present any arguments
or to identify with particularity any evidence to establish a reasonable
IPR2019-00235
Patent 7,868,912 B2 & C1
6
likelihood that Flinchbaugh I qualifies as a printed publication. Instead,
Petitioner only requested authorization to file a reply to present arguments
and evidence as to why Kellogg qualified as a printed publication. See
Paper 13 (Order granting Petitioner’s request to file a Reply Brief and
Motion to Correct). Petitioner does not provide a persuasive reason why we
should now consider arguments that were not presented in either the Petition
or the Reply, but rather were presented for the first time in a Request for
Rehearing. Under the circumstances of this case, Petitioner has not shown
that we misapprehended or overlooked any matters there were previously
addressed.
Petitioner’s Request also contends the Decision “does not reference
the many prior PTAB decisions that have repeatedly held that, at the
institution stage, ‘conventional markers’ of publication are sufficient to
show that a prior art reference is a printed publication.” Req. Reh’g 5.
Petitioner cites to a number of decisions and contends the indicia of
Flinchbaugh I “is comparable to the publication information relied on in
these precedents.” Id. at 6.
Each of the cited decisions, however, contain evidence of publication
that was not presented here. For example, in Nobel Biocare Services AG v.
Instradent USA, Inc., 903 F.3d 1365, 1376 (Fed. Cir. 2018) the Federal
Circuit relied on declaration testimony that the catalog at issue was publicly
accessible at a conference. In Informatica Corp. v. Protegrity Corp.,
CBM2015-00021, Paper 14 at 29–30 (PTAB June 1, 2015), the Board cited
to declaration testimony that the reference was published in 1971 and noted
that “other indicia found in [the reference] suggest [the declarant] is likely
correct about its apparent publication.” In both Ericsson Inc. v. Intellectual
Ventures I LLC, IPR2014-00527, Paper 41 at 10–11 (PTAB May 18, 2015)
IPR2019-00235
Patent 7,868,912 B2 & C1
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and Provepharm Inc. v. Wista Laboratories Ltd., IPR2018-00182, Paper 16
at 17–18 (PTAB July 5, 2018), the Board relied on, inter alia, evidence that
the purported publishers were well-known and established. In Palo Alto
Networks Inc. v. Juniper Networks, Inc., IPR2013-00369, Paper 16 at 15–16
(PTAB Dec. 19, 2013), the Board relied on a bibliographic data sheet as
evidence that the reference was a technical report published by the
University of Colorado at Colorado Springs. In Toyota Motor Corp. v.
American Vehicular Sciences LLC, IPR2013-00417, Paper 14 at 33 n.6
(PTAB Jan. 13, 2014), the Board cited to a notation from a third party source
as evidence that the reference was published. Thus, we see no inconsistency
between those decisions and our decision in this proceeding.
III. CONCLUSION
For the foregoing reasons, Petitioner has not demonstrated we abused
our discretion, or that we misapprehended or overlooked any issue, in
denying institution of inter partes review in this case. Petitioner, therefore,
has not carried its burden of demonstrating that the Decision denying
institution should be modified. See 37 C.F.R. § 42.71(d).
IV. ORDER
Accordingly, it is ORDERED that Petitioner’s Request for Rehearing
(Paper 20) is denied.
IPR2019-00235
Patent 7,868,912 B2 & C1
8
FOR PETITIONER:
C. Gregory Gramenopoulos
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
gramenoc@finnegan.com
Joseph Calvaruso
Richard Martinelli
ORRICK HERRINGTON & SUTCLIFFE LLP
jvcptabdocket@orrick.com
rfmptabdocket@orrick.com

PATENT OWNER:
Eugene Goryunov
Michael Dokhanchy
KIRKLAND & ELLIS LLP
egoryunov@kirkland.com
reza.dokhanchy@kirkland.com
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