UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________________
`
`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 AMENDED OBJECTIONS TO EVIDENCE
`SUBMITTED BY TOYOTA MOTOR CORPORATION
`
`Case No. IPR2013-00412
`
`
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`
`
`______________________________
`
`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 AMENDED OBJECTIONS TO EVIDENCE
`SUBMITTED BY TOYOTA MOTOR CORPORATION
`
`Case No. IPR2013-00412
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.64 and the Initial Conference Call on February 3,
`
`2014, Patent Owner American Vehicular Sciences (“AVS”) serves and submits the
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`following amended objections to evidence served with the Petition by Toyota
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`Motor Corporation (“Toyota”) for Inter Partes Review of U.S. Pat. No. 6,738,697
`
`(“the ‘697 patent”). These amended objections supersede AVS’s prior objections
`
`to evidence served and submitted on January 27, 2014. (Paper No. 21.)
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`1.
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`EXHIBIT 1002 (FRY REFERENCE)
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`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.
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`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. 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
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`Nordock's motion to exclude ‘undated’ and ‘unpublished’ references from
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`evidence as asserted ‘prior art’ references is granted.”); Amini Innovation Corp. v.
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`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
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`abstract of Fry that Toyota submitted as part of Exhibit 1002. Those documents
`
`
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`1
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`
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`are inadmissible hearsay under Fed. R. Evid. 801 and 802 as to the alleged
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`publication date of Fry, and lack authenticity or reliability under Fed. R. Evid.
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`901.
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`Specifically, Toyota acknowledges that the ‘697 patent claims priority to
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`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
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`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
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`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
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`published in the middle or end of the year. Indeed, the Fry reference discloses on
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`its face that it was not accepted for publication until December 22, 1994, making it
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`highly unlikely that the reference was published and publicly available by January
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`1, 1995. (See Exhibit 1002.) Accordingly, absent evidence that Fry was, for
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`example, publicly accessible at a library prior to June 7, 1995, it cannot constitute
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`§102(a) prior art to the ‘697 patent.
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`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”
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`
`
`2
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`
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`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.)
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`Toyota has not shown, however, that January 1, 1995 is the date Fry was
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`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
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`specific date of publication, but identify only a year). (See id.) See also, e.g.,
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`Carella v. Starlight Archery, 804 F.2d 135, 139, 231 USPQ 644, 647 (Fed. Cir.
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`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
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`Technology, Inc. v. Synergystex International, Inc., 1994 U.S. Dist. LEXIS 5301
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`(N.D. Calif. 1994) (“the June 1989 notation on the manual's cover does not identify
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`the date in June 1989 on which the manual was published, or if the manual was
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`actually published in June 1989”); Mannesmann Demag Corp. v. Engineered
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`Metal Products Co., 226 USPQ 466, 468-70 (D. Del. 1985) , aff'd, 793 F.2d 1279
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`(Fed. Cir. 1986) (Section 102(b) bar critical date was June 26, 1977; as to a printed
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`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).
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`Further, to the extent that Toyota is relying on the cover page and abstract
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`for the truth of the alleged publication date, they constitute inadmissible hearsay
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`that does not fall within one of the permissible exceptions. See Fed. R. Evid. 802.
`
`
`
`3
`
`
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`See also United States v. Jackson, 208 F.3d 633, 637 (7th Cir. 2000) (web postings
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`from the Internet were inadmissible hearsay); St. Clair v. Johnny's Oyster &
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`Shrimp, Inc., 76 F. Supp. 2d 773, 775 (S.D. Texas 1999) (“Any evidence procured
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`off the Internet is adequate for almost nothing, even under the most liberal
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`interpretations of the hearsay exception rules.”).
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`2.
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`EXHIBIT 1007 (AVS’S LITIGATION INFRINGEMENT
`CONTENTIONS)
`
`AVS objects pursuant to Fed. R. Evid. 402 and 403 to the admissibility of
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`Exhibit 1007, AVS’s infringement contentions in the district court litigation
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`between AVS and Toyota in the Eastern District of Texas. Toyota only attempted
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`to rely on AVS’s non-final, pre-discovery litigation positions as alleged admissions
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`dispositive of the priority dates of the ‘697 patent claims. (See, e.g., Petition at p.
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`5.) The Board, however, did not cite to or rely on Exhibit 1007 in its Decision
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`Instituting Inter Partes Review. (See Paper 18, 1/13/14 Board Decision.) And for
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`purposes of these proceedings, AVS does not dispute the priority dates asserted in
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`Toyota’s Petition.
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`Further, Exhibit 1007 is not arguably relevant to prove any other issues in
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`the proceeding. Toyota has not pointed to Exhibit 1007 for any other purpose. It
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`is well established that litigation positions and even district court rulings are not
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`binding before the USPTO because of the different standards for invalidity and
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`claim construction. See, e.g., Infinera Corp. v. Cheetah Omni, LLC, Appeal 2011-
`4
`
`
`
`
`
`007232 (BPAI March 30, 2012) (“In addition, we are not bound by positions taken
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`by Respondent in infringement litigation, as our standard for claim interpretation is
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`broadest reasonable interpretation commensurate with the Specification . . . .”).
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`See also, e.g., Garmin Intern., Inc. v. Patent of Cuozzo Speed Tech., LLC, Case
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`IPR2012-00001 (PTAB Jan. 9, 2013) (“Petitioner states that the term has to mean,
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`in this proceeding, what the Patent Owner asserts it means in the infringement suits
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`the Patent owner has filed against various parties including Petitioner. That
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`argument is without merit. The meaning of claim terms is not governed by what
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`the Patent Owner says they mean in filing an infringement suit based on the ‘074
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`Patent.”) (emphasis added). And AVS’s infringement contentions are not
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`AVS’s final positions on claim construction in any event, and are subject to
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`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
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`without leave of court after the court issues its claim construction ruling).
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`Accordingly, Exhibit 1007 is not relevant or necessary to prove any issue in
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`the inter partes review. See Fed. R. Evid. 401.
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`3.
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`INADMISSIBLE ATTORNEY ARGUMENT IN PETITION
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`Finally, AVS also objects pursuant to Fed. R. Evid. 402, 403, 702, and 802
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`to any arguments, statements, or references in the Petition or subsequent papers
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`
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`5
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`
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`filed by Petitioner, to any of the above-discussed inadmissible evidence. For
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`example, should the Board exclude AVS’s litigation infringement contentions or
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`the Fry or Ishihara references, AVS also objects to any attorney argument offering
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`similar statements.
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`DATE: February 5, 2014
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`Respectfully submitted,
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` /Thomas J. Wimbiscus/
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`
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`
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`Thomas J. Wimbiscus
`Registration No. 36,059
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`
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`MCANDREWS HELD & MALLOY
`500 West Madison, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile: (312) 775-8100
`
`
`CUSTOMER NUMBER: 23446
`
`
`
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`6
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`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the Patent Owner’s Amended Objections to Evidence
`Submitted by Toyota Motor Corporation in connection with Inter Partes Review
`Case IPR2013-00412 was served on this 5th day of February by electronic mail to
`the following:
`
`
`A. Antony Pfeffer
`apfeffer@kenyon.com
`Thomas R. Makin
`tmakin@kenyon.com
`ptab@kenyon.com
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212-425-7200
`
`
`
`MCANDREWS HELD & MALLOY
`
`
`
`
`
`
`Telephone: 312-775-8000
`
`
`Facsimile: 312-775-8100
`
`
`
`
`
`
`
`
`
`
`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
`
`
`
`
`
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`CUSTOMER NUMBER: 23446
`
`Date: February 5, 2014
`
`
`
`
`
`7
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