UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`TOYOTA MOTOR CORPORATION
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`Petitioner
`
`
`
`v.
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`
`
`Patent of AMERICAN VEHICULAR SCIENCES
`
`Patent Owner
`
`
`
`Patent No. 6,738,697
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`Issue Date: May 18, 2004
`
`Title: TELEMATICS SYSTEM FOR VEHICLE DIAGNOSTICS
`
`
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE SUBMITTED BY
`TOYOTA MOTOR CORPORATION
`
`Case No. IPR2013-00412
`
`
`
`
`
`
`
`
`
`
`
`
`
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TOYOTA MOTOR CORPORATION
`
`Petitioner
`
`
`
`v.
`
`
`
`Patent of AMERICAN VEHICULAR SCIENCES
`
`Patent Owner
`
`
`
`Patent No. 6,738,697
`
`Issue Date: May 18, 2004
`
`Title: TELEMATICS SYSTEM FOR VEHICLE DIAGNOSTICS
`
`
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE SUBMITTED BY
`TOYOTA MOTOR CORPORATION
`
`Case No. IPR2013-00412
`
`
`
`
`
`
`
`
`
`
`
`
`
`CONTENTS
`
`
`
`1.
`
`2.
`
`3.
`
`EXHIBITS RELATING TO PETITION GROUNDS REJECTED BY
`THE BOARD ................................................................................................... 1
`
`EXHIBIT 1002 (FRY REFERENCE) ............................................................. 3
`
`EXHIBIT 1007 (AVS’S LITIGATION INFRINGEMENT
`CONTENTIONS) ............................................................................................ 6
`
`4.
`
`EXHIBIT 1008 (ANDREWS DECLARATION) ........................................... 7
`
`A. Mr. Andrews’ Lack of Expert Qualifications ....................................... 8
`
`B.
`
`Testimony Regarding Patent Law ....................................................... 10
`
`C.
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`Speculative and Unsupported Opinions .............................................. 11
`
`D.
`
`Irrelevant Opinions or Ones Based on Incorrect Legal Standard ....... 15
`
`5.
`
`INADMISSIBLE ATTORNEY ARGUMENT IN PETITION .................... 21
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`
`
`
`
`i
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`
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`Pursuant to 37 C.F.R. § 42.64, Patent Owner American Vehicular Sciences
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`(“AVS”) serves and submits the following objections to evidence served with the
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`Petition by Toyota Motor Corporation (“Toyota”) for Inter Partes Review of U.S.
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`Pat. No. 6,738,697 (“the ‘697 patent”).1
`
`1.
`
`EXHIBITS RELATING TO PETITION GROUNDS REJECTED
`BY THE BOARD
`
`On January 13, 2014, the Board granted inter partes review on the following
`
`grounds raised by Toyota in its Petition:
`
` Ground 1 (as to claims 1, 2, 10, 17, 19-21, 32, 40, 61),
`
`
`1 Due to uncertainty in the rules, in addition to serving its objections to Toyota’s
`
`evidence, AVS is also filing its objections to evidence with the Board to make
`
`ensure that they are a part of the record for this trial. See, e.g., 37 C.F.R. §
`
`42.64(c) (providing that a motion to exclude “must identify the objections in the
`
`record”). Additionally, Toyota filed a number of petitions for inter partes review
`
`against AVS. In some of those inter partes review proceedings, the Board
`
`indicated that AVS was to file its objections to evidence. (See, e.g., IPR 2013-
`
`00422, 1/13/14 Board Decision (Paper No. 14) at 31 (“Within ten business days of
`
`institution of trial, Patent Owner must file an objection to evidence under 37 C.F.R.
`
`§ 42.64(b)(1) . . . .”).)
`
`
`
`
`
`1
`
`
`
` Ground 3 (as to claims 1, 2, 10, 17, 18, 21, 26, 27, 32, 61),
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` Ground 5 (as to claims 18, 19, 20, 26, 27, 40), and
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` Ground 7 (as to claims 18, 19, 20, 26, 27, 40).
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`Inter partes review was not instituted on the remaining grounds. (See Paper 18,
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`1/13/14 Decision to Grant Inter Partes Review (“1/13/14 Board Decision”).)
`
`Exhibits, expert testimony, and arguments relating to rejected grounds are
`
`therefore no longer relevant. See Fed. Evid. 402 (“[i]rrelevant evidence is not
`
`admissible”); Fed. R. Evid. 401. See also 37 C.F.R. §42.120 (“A patent owner
`
`may file a response to the petition addressing any ground for unpatentability not
`
`already denied.”) (emphasis added). Further, such evidence is inadmissible under
`
`Fed. R. Evid. 403, as any remaining probative value is substantially outweighed by
`
`a danger of unfair prejudice, confusing the issues, waste, or needless presentation
`
`of cumulative evidence. See Fed. R. Evid. 403.
`
`For example, Exhibits 1003 and 1004 relate to an asserted prior art reference
`
`(Ishihara) and rejection ground that were not granted by the Board. (See 1/13/14
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`Board Decision at pp. 27-28, 39-40.) Portions of the Declaration of Scott Andrews
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`similarly relate to the Ishihara reference. (See Ex. 1008, Andrews Decl. at ¶¶ 15,
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`39, 61-82, 113, 115-117, 125-126, and 131-147.)
`
`AVS therefore objects to the admissibility of Exhibits 1003 and 1004, as
`
`well as those portions of the Declaration of Mr. Andrews that discuss those
`
`
`
`2
`
`
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`exhibits, on the basis of relevance. AVS reserves its right to move to supplement
`
`its objections should Toyota later attempt to rely on rejected grounds or references,
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`or should it move for reconsideration of any rejected grounds.
`
`2.
`
`EXHIBIT 1002 (FRY REFERENCE)
`
`AVS objects to the admissibility of K.N. Fry, “Diesel Locomotive
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`Reliability Improvement by System Monitoring,” Proc. Instn. Mech. Engrs. Vol.
`
`209, 3-12 (1995) (“Fry”) because Toyota has not sufficiently established that Fry
`
`is prior art to the ‘697 patent. For that reason, Fry is irrelevant pursuant to Fed. R.
`
`Evid. 402 and/or inadmissible pursuant to Fed. R. Evid. 403. See, e.g., Nordock
`
`Inc. v. Systems Inc., 2013 U.S. Dist. LEXIS 34661 (E.D. Wis. Mar. 13, 2013)
`
`(“Because insufficient evidence has been presented regarding the dates of the two
`
`publications, they are not admissible as prior art and Nordock's motion to exclude
`
`‘undated’ and ‘unpublished’ references from evidence as asserted ‘prior art’
`
`references is granted.”); Amini Innovation Corp. v. Anthony California, Inc., 2006
`
`U.S. Dist. LEXIS 100800 (C.D. Cal. Sept. 21, 2006) (“Without knowing the
`
`publication dates, the documents are not admissible as prior art.”). In addition,
`
`AVS objects to a 2013-dated Internet cover page and abstract of Fry that Toyota
`
`submitted as part of Exhibit 1002. Those documents are inadmissible hearsay
`
`under Fed. R. Evid. 801 and 802 as to the alleged publication date of Fry, and
`
`lack authenticity or reliability under Fed. R. Evid. 901.
`
`
`
`3
`
`
`
`Specifically, Toyota acknowledges that the ‘697 patent claims priority to
`
`June 7, 1995. (See Petition at p. 5, fn. 2.) Toyota argues only that claims 19, 20,
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`and 40 of the ‘697 patent, which relate to GPS location identification, have a later
`
`effective filing date of June 19, 2002. The presumed §102(a) date for all other
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`claims, therefore, is June 7, 1995. The Fry reference, however, indicates only that
`
`it was published in “1995,” without a more specific date. (See Exhibit 1002.) The
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`publication date of “1995” indicated on the face of Fry could mean that it was
`
`published in the middle or end of the year. Indeed, the Fry reference discloses on
`
`its face that it was not accepted for publication until December 22, 1994, making it
`
`highly unlikely that the reference was published and publicly available by January
`
`1, 1995. (See Exhibit 1002.) Accordingly, absent evidence that Fry was, for
`
`example, publicly accessible at a library prior to June 7, 1995, it cannot constitute
`
`§102(a) prior art to the ‘697 patent.
`
`Toyota nevertheless asserts that because a third-party website later recorded
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`the publication date as being January 1, 1995, that this is the actual date of
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`publication. (See Petition at p. 5.) In particular, a cover page and abstract from
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`Sage Publications downloaded by Toyota in 2013 indicate a “version of record”
`
`date for Fry of January 1, 1995 and cite the reference with a January 1995 date.
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`(See Ex. 1002 at pages 1, 13.)
`
`
`
`4
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`
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`Toyota has not shown, however, that January 1, 1995 is the date Fry was
`
`actually publicly available, as opposed to being merely a recording convention of
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`Sage Publications in its 2013 database (e.g., for articles that do not identify a
`
`specific date of publication, but identify only a year). (See id.) See also, e.g.,
`
`Carella v. Starlight Archery, 804 F.2d 135, 139, 231 USPQ 644, 647 (Fed. Cir.
`
`1986) (as to an advertisement mailed on a certain date, “[n]o evidence was
`
`presented as to the date of receipt of the mailer by any of the addressees.”); DH
`
`Technology, Inc. v. Synergystex International, Inc., 1994 U.S. Dist. LEXIS 5301
`
`(N.D. Calif. 1994) (“the June 1989 notation on the manual's cover does not identify
`
`the date in June 1989 on which the manual was published, or if the manual was
`
`actually published in June 1989”); Mannesmann Demag Corp. v. Engineered
`
`Metal Products Co., 226 USPQ 466, 468-70 (D. Del. 1985) , aff'd, 793 F.2d 1279
`
`(Fed. Cir. 1986) (Section 102(b) bar critical date was June 26, 1977; as to a printed
`
`brochure with a “6.77” date mark, the evidence did not show that it was actually
`
`accessible to the public prior to the critical date).
`
`Further, to the extent that Toyota is relying on the cover page and abstract
`
`for the truth of the alleged publication date, they constitute inadmissible hearsay
`
`that does not fall within one of the permissible exceptions. See Fed. R. Evid. 802.
`
`See also United States v. Jackson, 208 F.3d 633, 637 (7th Cir. 2000) (web postings
`
`from the Internet were inadmissible hearsay); St. Clair v. Johnny's Oyster &
`
`
`
`5
`
`
`
`Shrimp, Inc., 76 F. Supp. 2d 773, 775 (S.D. Texas 1999) (“Any evidence procured
`
`off the Internet is adequate for almost nothing, even under the most liberal
`
`interpretations of the hearsay exception rules.”).
`
`3.
`
`EXHIBIT 1007 (AVS’S LITIGATION INFRINGEMENT
`CONTENTIONS)
`
`AVS objects pursuant to Fed. R. Evid. 402 and 403 to the admissibility of
`
`Exhibit 1007, AVS’s infringement contentions in the district court litigation
`
`between AVS and Toyota in the Eastern District of Texas. Toyota only attempted
`
`to rely on AVS’s non-final, pre-discovery litigation positions as alleged admissions
`
`dispositive of the priority dates of the ‘697 patent claims. (See, e.g., Petition at p.
`
`5.) The Board, however, did not cite to or rely on Exhibit 1007 in its Decision
`
`Instituting Inter Partes Review. (See Paper 18, 1/13/14 Board Decision.) And for
`
`purposes of these proceedings, AVS does not dispute the priority dates asserted in
`
`Toyota’s Petition.
`
`Further, Exhibit 1007 is not arguably relevant to prove any other issues in
`
`the proceeding. Toyota has not pointed to Exhibit 1007 for any other purpose. It
`
`is well established that litigation positions and even district court rulings are not
`
`binding before the USPTO because of the different standards for invalidity and
`
`claim construction. See, e.g., Infinera Corp. v. Cheetah Omni, LLC, Appeal 2011-
`
`007232 (BPAI March 30, 2012) (“In addition, we are not bound by positions taken
`
`by Respondent in infringement litigation, as our standard for claim interpretation is
`
`
`
`6
`
`
`
`broadest reasonable interpretation commensurate with the Specification . . . .”).
`
`See also, e.g., Garmin Intern., Inc. v. Patent of Cuozzo Speed Tech., LLC, Case
`
`IPR2012-00001 (PTAB Jan. 9, 2013) (“Petitioner states that the term has to mean,
`
`in this proceeding, what the Patent Owner asserts it means in the infringement suits
`
`the Patent owner has filed against various parties including Petitioner. That
`
`argument is without merit. The meaning of claim terms is not governed by what
`
`the Patent Owner says they mean in filing an infringement suit based on the ‘074
`
`Patent.”) (emphasis added). And AVS’s infringement contentions are not
`
`AVS’s final positions on claim construction in any event, and are subject to
`
`revision. See, e.g., SSL Servs., LLC v. Citrix Sys., 2012 U.S. Dist. LEXIS 35788
`
`(E.D. Tex. Mar. 16, 2012) (explaining that pursuant to Eastern District of Texas
`
`Local Patent Rule 3-6(a)(1), a party may amend its infringement contentions
`
`without leave of court after the court issues its claim construction ruling).
`
`Accordingly, Exhibit 1007 is not relevant or necessary to prove any issue in
`
`the inter partes review. See Fed. R. Evid. 401. Any minimal probative value is
`
`substantially outweighed by a danger of unfair prejudice, confusing the issues,
`
`waste, or needless presentation of cumulative evidence. See Fed. R. Evid. 403.
`
`4.
`
`EXHIBIT 1008 (ANDREWS DECLARATION)
`
`AVS also objects to the admissibility of the declaration of Scott Andrews.
`
`For the reasons discussed below, Mr. Andrews’ declaration is inadmissible under
`
`
`
`7
`
`
`
`Fed. R. Evid. 702 in light of his lack of expert qualifications in the subject matter
`
`of the ‘697 patent. In addition, many of Mr. Andrews’ specific opinions are
`
`inadmissible to the extent they are speculative and lack support, relate to irrelevant
`
`matters, or are based on legally improper standards or claim interpretations. As
`
`such, those specific opinions discussed below are separately inadmissible under
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`Fed. R. Evid. 702, 402, and/or 403.
`
`A. Mr. Andrews’ Lack of Expert Qualifications
`
`The ‘697 patent generally relates to a vehicle having a diagnosis system
`
`arranged on the vehicle and a transmitter for communicating the on-board
`
`diagnosis to a remote site. (See, e.g., Ex. 1001, ‘697 patent at claims 1, 21.)
`
`Accordingly, the fields of vehicle diagnostics and vehicle telematics (i.e.,
`
`communication from a vehicle to a remote site) are core to the ‘697 patent.
`
`Nowhere in Mr. Andrews’ declaration does he purport to have any education
`
`or experience in diagnostics or telematics. His declaration describes only his
`
`general education in electrical engineering, and then his work in microwave
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`technology from 1977-1993 (Ex. 1008 at ¶ 5), his work from 1993-1996 managing
`
`(not personally designing or developing) individuals working on automotive radar,
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`adaptive cruise, occupant sensing, automatic crash notification, in-vehicle
`
`“information systems,” and vague “other emerging transportation products” (id. at
`
`¶ 6), and his work from 1996-2000 working on “multimedia and new technology
`
`
`
`8
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`
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`products” for vehicles (id. at ¶ 7.) Similarly, his curriculum vitae does not detail
`
`any education or experience in vehicle diagnostics, and only describes a single
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`expert witness role relating to telematics. (See Ex. 1008 at C.V.)
`
`As such, Toyota’s has not shown that Mr. Andrews’ qualifications are
`
`sufficiently directed to the technology of the ‘697 patent, and his opinions
`
`regarding the ‘697 patent or its validity would not be informative. See Fed. R.
`
`Evid. 702; Daubert v. Merrell Dow Pharma., Inc., 509 U.S. 579 (1993); Oglesby v.
`
`GMC, 190 F.3d 244, 247 (4th Cir. S.C. 1999) (testimony excluded of well-
`
`qualified mechanical engineer with no specialized experience or expertise in
`
`evaluating either automobile manufacturing processes or the strength of plastic
`
`automobile component parts); Shreve v. Sears, Roebuck & Co., 166 F. Supp. 2d
`
`378 (D. Md. 2001) (“an expert who is a mechanical engineer is not necessarily
`
`qualified to testify as an expert on any issue within the vast field of mechanical
`
`engineering”; excluding testimony of expert who had no experience in devices at
`
`issue in the case); Ancho v. Pentek Corp., 157 F.3d 512, 517 (7th Cir. 1998)
`
`(mechanical engineer with no experience designing or evaluating factories not an
`
`expert on industrial plant configuration); Diviero v. Uniroyal Goodrich Tire Co.,
`
`919 F. Supp. 1353, 1356 (D. Ariz. 1996) (engineer with over 30 years of
`
`experience working with bias belted tires not qualified to testify that steel belted
`
`tire was unreasonably dangerous because two tires significantly different and he
`
`
`
`9
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`
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`lacked chemical background to gauge compatibility of steel and rubber interface in
`
`tire).
`
`B. Testimony Regarding Patent Law
`
`The rules for inter partes review provide that “testimony on United States
`
`patent law or patent examination practice will not be admitted.” 37 C.F.R. 42.65.
`
`At several points in his declaration, Mr. Andrews recites the legal standards for
`
`anticipation, obviousness, claim construction, etc. (See, e.g., Ex. 1008 at ¶¶ 32-35,
`
`61.) To the extent that Mr. Andrews is merely reciting the legal standards
`
`provided to him as background for his opinions, AVS does not object to its
`
`inclusion in his declaration. AVS does, however, object to the substantive
`
`admissibility of any expert testimony on patent law.
`
`Further, AVS objects to instances where Mr. Andrews provides opinions the
`
`ultimate legal issues of “patentability” or “validity.” (See, e.g., Ex. 1008 at ¶¶ 13-
`
`14, 31.) Expert witness testimony may be relevant and helpful for technical factual
`
`issues, but Mr. Andrews is not an expert on whether claims are or are not
`
`patentable or valid under the Patent Laws. See, e.g., SRI Int'l v. Advanced
`
`Technology Lab., 1994 U.S. App. LEXIS 36220 (Fed. Cir. Dec. 21, 1994) (“An
`
`expert’s opinion on the ultimate legal conclusion of obviousness is not ‘factual’
`
`evidence.”). See also, e.g., Berry v. City of Detroit, 25 F.3d 1342, 1353 (6th Cir.
`
`1994) (“Although an expert's opinion may ‘embrace[] an ultimate issue to be
`
`
`
`10
`
`
`
`decided by the trier of fact[,]’ Fed. R. Evid. 704(a), the issue embraced must be a
`
`factual one.”); Connell v. KLN Steel Prods. Ltd., 2009 U.S. Dist. LEXIS 20576
`
`(N.D. Ill. Mar. 16, 2009) (“Expert testimony as to legal conclusions that will
`
`determine the outcome of the case is inadmissible.”).
`
`AVS also objects to the admissibility of Mr. Andrews’ legal opinions on the
`
`prior art status of references (e.g., Ex. 1008 at ¶¶ 40, 61, 83), ultimate conclusions
`
`as to obviousness (e.g., Ex. 1008 at ¶¶ 30), or the effect of secondary
`
`considerations, to the extent they are offered as “factual” evidence. For example,
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`Mr. Andrews states that:
`
`Regardless, even if evidence of secondary considerations existed, in my
`opinion it would be insufficient to overcome the clear obviousness of the
`claims of the ’697 patent as outlined above.
`
`(Ex. 1008 at ¶ 130.) Such legal conclusions are improper expert testimony. See,
`
`e.g. Soverain Software LLC v. Newegg Inc., 705 F.3d 1333, 1341 (Fed. Cir. 2013),
`
`quoting Avia Group Int'l v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1564 (Fed. Cir.
`
`1988) (“an expert’s opinion on the legal conclusion of obviousness is neither
`
`necessary nor controlling”). See also Connell v. KLN Steel Prods. Ltd., 2009 U.S.
`
`Dist. LEXIS 20576 (N.D. Ill. Mar. 16, 2009) (“legal arguments about the meaning
`
`of contracts belong in briefs, not expert reports”).
`
`C. Speculative and Unsupported Opinions
`
`Pursuant to Federal Rule of Evidence 702, expert testimony is admissible
`
`
`
`11
`
`
`
`only if “(1) the testimony is based upon sufficient facts or data, (2) the testimony is
`
`the product of reliable principles and methods, and (3) the witness has applied the
`
`principles and methods reliably to the case.” Fed. R. Evid. 702. “Talking off the
`
`cuff—deploying neither data nor analysis—is not acceptable methodology.” Lang
`
`v. Kohl’s Food Stores, Inc., 217 F.3d 919, 924 (7th Cir. 2000); Upjohn Co. v.
`
`MOVA Pharm. Corp., 225 F.3d 1306, 1311-12 (Fed. Cir. 2000) (expert testimony
`
`regarding what is “widely known” requires documentary evidence). See also
`
`Comm. Note to Fed. R. Evid. 702 (2000) (an expert opinion is inadmissible as
`
`conclusory if it “cannot reasonably be assessed for reliability”). Further, 37 C.F.R.
`
`§ 42.65 provides that expert testimony “that does not disclose the underlying facts
`
`or data on which the opinion is based is entitled to little or no weight.”
`
`Mr. Andrews’ declaration contains numerous instances where he simply
`
`provides “off the cuff” or conclusory opinion without any support. Each of these
`
`opinions by Mr. Andrews is inadmissible as expert testimony:
`
`
`
`At paragraph 36, Mr. Andrews provides a definition of a person of
`
`ordinary skill. (Ex. 1008 at ¶36.) Mr. Andrews, however, provides no basis for
`
`why he selected the criteria for what he believes is a person of ordinary skill in the
`
`art at the time of the invention, and instead simply gives a conclusory opinion.
`
`
`
`At paragraph 38, Mr. Andrews provides a definition of the scope and
`
`content of the prior art. (Ex. 1008 at ¶38.) He fails to provide, however, any basis
`
`
`
`12
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`
`
`for this definition. In particular, his opinion that the scope of the prior art broadly
`
`includes all “vehicle electronics” is mere unsupported argument. The field of
`
`“vehicle electronics” encompasses a great deal more than the diagnostic and
`
`telematics technology of the ‘697 patent. As discussed above, expertise in vehicle
`
`electronics generally is insufficient to form a basis for expertise in the subject
`
`matter of the ‘697 patent. (See supra.)
`
`
`
`At paragraph 40, Mr. Andrews provides an opinion regarding the
`
`publication date of Fry. As discussed above, there is insufficient evidence for the
`
`publication date of Fry. (See supra.) Moreover, there is nothing in Mr. Andrews’
`
`background that makes him an expert on publication dates.
`
`
`
`At paragraphs 46 and 60, Mr. Andrews concludes without support that
`
`Fry discloses transmitting a diagnosis automatically and without manual
`
`intervention. (Ex. 1008 at ¶¶ 46, 60 (emphasis added).) The Board agreed with
`
`Mr. Andrews’ opinion in its 1/13/14 Decision, and stated that Fry does disclose
`
`transmission with manual intervention. However, AVS respectfully maintains its
`
`position that Fry does not necessarily disclose automatically sending a message, or
`
`doing so without manual intervention. (See Ex. 1002, Fry.) Each of the statements
`
`in Fry cited by the Board and Mr. Andrews are consistent with manual intervention
`
`being involved. The only “automatic” disclosure in Fry relates to “creating a file
`
`containing the message” and identifying that a fault file has been created. (See
`
`
`
`13
`
`
`
`1/13/14 Board Decision at p. 30.) But each of these “automatic” steps could be
`
`performed in Fry after the driver manually indicates that a message should be sent.
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`The Board stated that the disclosure of Fry merely “does not negate automatic
`
`reporting” (i.e., it is not inconsistent with automatic reporting). (See 1/13/14 Board
`
`Decision at 31.) But the law requires that to find anticipation, the Board must find
`
`that Fry “necessarily” discloses automatic reporting—not that Fry merely could
`
`involve automatic reporting. See Atofina v. Great Lakes Chemical Corp., 441 F.3d
`
`991, 1000 (Fed. Cir. 2006) (“anticipation by inherent disclosure is appropriate only
`
`when the reference discloses prior art that must necessarily include the unstated
`
`limitation”); Agilent Techs. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir.
`
`2009) (“The very essence of inherency is that one of ordinary skill in the art would
`
`recognize that a reference unavoidably teaches the property in question.”)
`
`(emphasis added). Because Mr. Andrews’ declaration provides no support to show
`
`that Fry “necessarily” discloses automatic
`
`transmission without manual
`
`intervention, AVS objects to its admissibility. See Fed. R. Evid. 702.
`
`
`
`At paragraph 112, Mr. Andrews makes the conclusory allegation that
`
`on-board displays and warning systems were “common” prior to 1995. (Ex. 1005
`
`at ¶112.) However, he only cites to two examples—Ishihara (a reference rejected
`
`by the Board) and Asano, neither of which disclosed displays for displaying on-
`
`board diagnostics. Nor does he provide any support for his argument that “many
`
`
`
`14
`
`
`
`vehicles” included such displays and warning lamps, or his statements that such
`
`displays were “in routine and regular use.”
`
`
`
`At paragraphs 121-130, Mr. Andrews sets forth conclusory allegations
`
`that the claims of the ‘697 patent would have been obvious in view of the prior art.
`
`Many of his arguments, however, are based on unsupported assumptions regarding
`
`what would have been desirable or advantageous in the locomotive system of Fry,
`
`even though he has no experience with locomotives. (See Ex. 1008 at 121-127.)
`
`He also concludes without any rationale or support that it would have allegedly
`
`been obvious to add GPS and GPS location transmission to the system of Asano
`
`simply because Fry discloses that its technology is “flexible.” And he provides
`
`conclusory opinions regarding secondary considerations and what would have
`
`driven sales, without any citation to sales documents, marketing documents,
`
`articles discussing long-felt need or lack thereof, or even the scope of the claims at
`
`issue. (See Ex. 1005 at 129-130, 145-147.)
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`Accordingly, AVS objects to such speculative, conclusory, or unsupported
`
`testimony, as such testimony is unreliable and unhelpful, irrelevant, and unfairly
`
`prejudicial.
`
`D. Irrelevant Opinions or Ones Based on Incorrect Legal Standard
`
`Pursuant to Fed. Evid. 402, evidence is inadmissible if it is irrelevant, with
`
`no exception made for expert witness testimony. See Fed. R. Evid. 402. Further,
`
`
`
`15
`
`
`
`expert testimony in particular can be irrelevant not only if it facially has no bearing
`
`on the dispute, but also if it is based on underlying incorrect assumptions or
`
`standards. For example, expert testimony is irrelevant if it is based on an incorrect
`
`legal standard or claim construction. See, e.g., Noskowiak v. Bobst Sa, Case No.
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`04-C-0642, 2005 U.S. Dist. LEXIS 19536, **14-15 (E.D. Wis. 2005)
`
`(“[T]estimony based on an incorrect legal standard may confuse the jury, and may
`
`be proscribed by the Court.”); Icon Health & Fitness, Inc. v. Octane Fitness, LLC,
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`2011 U.S. Dist. LEXIS 64770 (D. Minn. 2011) (“Because it is based on an
`
`erroneous claim construction, Dr. Rasty’s opinion … is not admissible.”).
`
`In several instances, Mr. Andrews provides opinions in his declaration that
`
`are irrelevant to any issue and/or are irrelevant because they are based on an
`
`incorrect legal standard or claim construction. These include the following:
`
`
`
`At paragraph 45 of his declaration, Mr. Andrews concludes that Fry
`
`discloses prognostic technology in addition to diagnostic technology. (See Ex.
`
`1005 at ¶ 45.) While AVS disputes this assertion, it is also irrelevant, as none of
`
`the claims of the ‘697 patent relate to prognostics (which is the subject of different,
`
`unrelated patents owned by AVS).
`
`
`
`At paragraphs 46 and 60, Mr. Andrews’s opinion that Fry discloses
`
`automatic transmission of a diagnosis without manual intervention is not based on
`
`the correct legal standard. As such, it is not relevant. As discussed above, the
`
`
`
`16
`
`
`
`Board agreed with Mr. Andrews that Fry discloses transmission with manual
`
`intervention. (See 1/13/14 Board Decision at 29-31.) However, AVS respectfully
`
`maintains its position that Fry does not necessarily disclose automatically sending
`
`a message, or doing so without manual intervention. (See above.) The law
`
`requires that to find anticipation, Toyota and Mr. Andrews must show that Fry
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`“necessarily” discloses automatic reporting—not that Fry merely could involve
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`automatic reporting. See Atofina v. Great Lakes Chemical Corp., 441 F.3d 991,
`
`1000 (Fed. Cir. 2006) (“anticipation by inherent disclosure is appropriate only
`
`when the reference discloses prior art that must necessarily include the unstated
`
`limitation”); Agilent Techs. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir.
`
`2009) (“The very essence of inherency is that one of ordinary skill in the art would
`
`recognize that a reference unavoidably teaches the property in question.”)
`
`(emphasis added). Because Mr. Andrews’ declaration provides no support to show
`
`that Fry “necessarily” discloses automatic
`
`transmission without manual
`
`intervention, that opinion is not admissible. See Fed. R. Evid. 702.
`
`
`
`At paragraphs 51, 73, and 96 of his declaration, Mr. Andrews
`
`provides opinions that are irrelevant because they are based on what AVS
`
`maintains is an incorrect interpretation of the claim term “control.” (See Ex. 1005
`
`at ¶¶ 51, 73, 96.) Specifically, Mr. Andrews concludes that Fry and Asano disclose
`
`a processor “arranged to control at least one part of the vehicle based on the output
`
`
`
`17
`
`
`
`indicative or representative of the state of the vehicle or the state of a component of
`
`the vehicle,” as required by claim 17 of the ‘697 patent. (See id.) However, AVS
`
`maintains that simply transmitting or displaying information (which Mr. Andrews
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`concedes is the extent of the disclosure in Fry and Asano) does not constitute
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`“control” of at least one part of the vehicle under the proper interpretation of the
`
`claim. AVS notes that the Board has taken the position that “control” can
`
`encompass transmission or display of information. (See 1/13/14 Board Decision at
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`pp. 31-32.) However, AVS maintains its objection that this is an incorrect claim
`
`construction, therefore making any opinions based on this construction irrelevant.
`
`
`
`Throughout his declaration, Mr. Andrews provides opinions based on
`
`an interpretation of the claim term “a diagnostic system arranged on the vehicle.”
`
`For example, Mr. Andrews concludes that this limitation can be satisfied by a
`
`reference that only discloses diagnosis performed at a remote site and only
`
`discloses detecting simple fault codes on the vehicle itself. (See, e.g., Ex. 1005 at
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`¶¶ 66-68, 76-77, 81, 88-91, 95, 99-100, and 104.) AVS recognizes that the Board
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`has held that detection of a “basic abnormality diagnosis” is encompassed by the
`
`claim requirement of a “diagnostic system arranged on the vehicle.” (See 1/13/14
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`Board Petition at pp. 20-21.) AVS, however, maintains that this is an incorrect
`
`claim construction and is inconsistent with the claims and specification of the ‘697
`
`patent. AVS maintains that the ‘697 patent requires a “diagnosis” to be performed
`
`
`
`18
`
`
`
`on the vehicle (i.e., a determination of the cause of a problem), and not merely
`
`detection of “abnormalities” (i.e., a determination that something is vaguely wrong
`
`without determining the cause). AVS preserves its objection that Mr. Andrews’
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`opinions in this regard are based on an incorrect construction.
`
`
`
`Mr. Andrews also concludes that displaying diagnostic information
`
`received from a remote site satisfies the ‘697 patent claim requirement of “said
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`display … arranged to display the diagnosis.” (See, e.g., Ex. 1005 at ¶¶ 70, 93,
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`101.) Similarly, Mr. Andrews concludes that a warning based on merely a fault
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`code or one received from an off-vehicle site satisfies the claim requirement of
`
`“relaying a warning . . . relating to the state of the vehicle or the state of a
`
`component of the vehicle as diagnosed by said diagnostic system.” (See Ex. 1005
`
`at ¶¶ 74, 97, 102.) For the same reasons discussed above, AVS maintains that Mr.
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`Andrews’ opinions are based on an incorrect construction of the requirement of a
`
`“diagnostic system arranged on the vehicle.” AVS therefore maintains its position
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`and preserves its objection that Mr. Andrews’ opinions in this regard are based on
`
`an incorrect claim construction and not relevant.
`
`
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`At paragraphs 119-120 of his declaration, Mr. Andrews makes the
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`irrelevant and conclusory assertion that “other portions of Fry confirm that a
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`display or warning device could readily be included.” (Ex. 1005 at ¶¶ 119-120.)
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`However, the cited portions of Fry relate solely to an operating system interface,
`
`
`
`19
`
`
`
`and not an information display or warning system.
`
`
`
`At paragraphs 125 and 143, Mr. Andrews argues that the mere fact
`
`that the Fry, Ishihara, and Asano references are in the same field of “vehicles”
`
`means that it would have been obvious to combine them. That opinion, however,
`
`is contrary to the law. It is not enough for obviousness to merely pick and choose
`
`references in the same field without more. Obviousness requires a rational,
`
`obvious reason that one of ordinary skill in the art would have had to combine the
`
`references. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415 (U.S. 2007);
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`Graham v. John Deere Co., 383 U.S. 1, 17 (U.S. 1966).
`
`
`
`At paragraphs 126 and 144, Mr. Andrews recites his reasoning for
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`why it allegedly would have been obvious to combine prior art references. (See
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`Ex. 1005 at ¶¶ 126, 144.) However, his reasoning does not comport with any
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`accepted obviousness rationales as articulated by KSR v. Teleflex and its progeny.
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`See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415 (U.S. 2007). For example, he
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`argues that “the combination of Fry with either Ishihara or Asano amounts to only
`
`the addition of a known GPS device to a diagnostic sensor system for detecting
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`component failure. Including GPS position finding functionality, and the
`
`transmission of location information, as part of such a system is nothing more than
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`a simple design choice.” (Ex. 1005 at ¶ 144.) This argum
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