UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`TOYOTA MOTOR CORPORATION
`
`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. IPR2013-00413
`
`
`
`
`
`
`
`
`
`
`
`______________________________
`
`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. IPR2013-00413
`
`
`
`
`
`
`
`
`
`
`
`CONTENTS
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`
`
`1.
`
`2.
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`EXHIBITS RELATING TO PETITION GROUNDS REJECTED BY THE
`BOARD ........................................................................................................... 1
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`EXHIBIT 1105 (AVS’S LITIGATION INFRINGEMENT
`CONTENTIONS) ............................................................................................ 2
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`3.
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`EXHIBIT 1106 (ANDREWS DECLARATION) ........................................... 4
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`A. Mr. Andrews’ Lack of Expert Qualifications ......................................... 5
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`B. Testimony Regarding Patent Law or Legal Issues ................................. 7
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`C. Speculative, Unsupported, or Conclusory Opinions ............................... 8
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`D.
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`Irrelevant Opinions or Ones Based on Incorrect Legal Standard ......... 13
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`INADMISSIBLE ATTORNEY ARGUMENT IN PETITION ....................16
`
`i
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`4.
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`
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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 of Toyota Motor Corporation (“Toyota”) Petition for Inter Partes Review
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`of U.S. Pat. No. 6,738,697 (“the ‘697 patent”).1
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`1.
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`EXHIBITS RELATING TO PETITION GROUNDS REJECTED
`BY THE BOARD
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`On January 13, 2014, the Board granted inter partes review on the following
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`grounds raised by Toyota in its Petition:
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` Ground 2 (claims 1, 2, 5, 10, 17-19, 21, 26, 27, 32, 40, 61), and
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` Ground 4 (as to claim 20).
`
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`1 Due to uncertainty in the rules, in addition to serving its objections to Toyota’s
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`evidence, AVS is also filing its objections to evidence with the Board to make
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`ensure that they are a part of the record for this trial. See, e.g., 37 C.F.R. §
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`42.64(c) (providing that a motion to exclude “must identify the objections in the
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`record”). Additionally, Toyota filed a number of petitions for inter partes review
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`against AVS. In some of those inter partes review proceedings, the Board
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`indicated that AVS was to file its objections to evidence. (See, e.g., IPR 2013-
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`00422, 1/13/14 Board Decision (Paper No. 14) at 31 (“Within ten business days of
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`institution of trial, Patent Owner must file an objection to evidence under 37 C.F.R.
`
`§ 42.64(b)(1) . . . .”).)
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`1
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Inter partes review was not instituted on the remaining grounds. (See 1/13/14
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`Decision to Grant Inter Partes Review (“1/13/14 Board Decision”).)
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`Exhibits, expert testimony, and arguments relating to rejected grounds are,
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`therefore, no longer relevant. See Fed. Evid. 402 (“[i]rrelevant evidence is not
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`admissible”); Fed. R. Evid. 401. See also 37 C.F.R. §42.120 (“A patent owner
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`may file a response to the petition addressing any ground for unpatentability not
`
`already denied.”) (emphasis added). Further, such evidence is inadmissible under
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`Fed. R. Evid. 403, as any remaining probative value is substantially outweighed by
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`a danger of unfair prejudice, confusing the issues, waste, or needless presentation
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`of cumulative evidence. Fed. R. Evid. 403.
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`For example, portions of the Declaration of Scott Andrews relate to rejected
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`grounds 1 and 3. (See Ex. 1106, Andrews Decl. at ¶¶ 40-65, 90-105)
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`AVS therefore objects to the admissibility of those portions of the
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`Declaration of Mr. Andrews that discuss those rejected grounds under Fed. Evid.
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`402 and 403. AVS reserves its right to move to supplement its objections should
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`Toyota later attempt to rely on rejected grounds or references, or should it move
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`for reconsideration of any rejected grounds.
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`2.
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`EXHIBIT 1105 (AVS’S LITIGATION INFRINGEMENT
`CONTENTIONS)
`
`AVS objects to the admissibility of Exhibit 1105, AVS’s infringement
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`contentions in the district court litigation between AVS and Toyota in the Eastern
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`2
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2013-00413
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`District of Texas pursuant to Fed. R. Evid. 402 and 403. These infringement
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`contentions have no bearing on the present inter partes review proceedings.
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`Toyota only attempted to rely on AVS’s non-final, pre-discovery litigation
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`positions as alleged admissions dispositive of the priority dates of the ‘697 patent
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`claims. (See, e.g., Petition at p. 5.) The Board, however, did not cite to or rely on
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`Exhibit 1105 in its Decision Instituting Inter Partes Review. (See Paper 16,
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`1/13/14 Board Decision.) And for purposes of these proceedings, AVS does not
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`dispute the priority dates asserted in Toyota’s Petition.
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`Further, Exhibit 1105 is not arguably relevant to prove any other issues in
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`the proceeding. Toyota has not pointed to Exhibit 1105 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-
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`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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`3
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`PATENT OWNER’S PRELIMINARY RESPONSE
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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
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`(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 1105 is not relevant or necessary to prove any issue in
`
`the inter partes review. See Fed. R. Evid. 401. Any minimal probative value is
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`substantially outweighed by a danger of unfair prejudice, confusing the issues,
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`waste, or needless presentation of cumulative evidence. See Fed. R. Evid. 403.
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`Accordingly, AVS objects to the admissibility of Exhibit 1105.
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`3.
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`EXHIBIT 1106 (ANDREWS DECLARATION)
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`AVS also objects to the admissibility of the declaration of Scott Andrews.
`
`For the reasons discussed below, Mr. Andrews’ declaration is inadmissible under
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`Fed. R. Evid. 702 in light of his lack of expert qualifications in the subject matter
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`of the ‘697 patent. In addition, many of Mr. Andrews’ specific opinions are
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`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
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`4
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`such, those specific opinions discussed below are separately inadmissible under
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2013-00413
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`Fed. R. Evid. 702, 402 and/or 403.
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`A. Mr. Andrews’ Lack of Expert Qualifications
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`The ‘697 patent generally relates to a vehicle having a diagnosis system
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`arranged on the vehicle and a transmitter for communicating the on-board
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`diagnosis to a remote site. (See, e.g., Ex. 1101, ‘697 patent at claims 1, 21.)
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`Accordingly, the fields of vehicle diagnostics and vehicle telematics (i.e.,
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`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
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`or experience in diagnostics or telematics. His declaration describes only his
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`general education in electrical engineering, and then his work in microwave
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`technology from 1977-1993 (Ex. 1106 at ¶ 5), his work from 1993-1996 managing
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`(not personally designing or developing) individuals working on automotive radar,
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`adaptive cruise, occupant sensing, automatic crash notification, in-vehicle
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`“information systems,” and vague “other emerging transportation products” (id. at
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`¶6), and his work from 1996-2000 working on “multimedia and new technology
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`products” for vehicles (id. at ¶ 7.) Similarly, his curriculum vita does not detail
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`any education or experience in vehicle diagnostics, and only describes a single
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`expert witness role relating to telematics. (See Ex. 1106 at C.V.)
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`5
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`As such, Toyota has not shown that Mr. Andrews’ qualifications are
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`sufficiently directed to the technology of the ‘697 patent, and that his opinions
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`regarding the ‘697 patent or its validity would be informative. See Fed. R. Evid.
`
`702; Daubert v. Merrell Dow Pharma., Inc., 509 U.S. 579 (1993); Oglesby v.
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`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
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`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
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`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)
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`(mechanical engineer with no experience designing or evaluating factories not an
`
`expert on industrial plant configuration); Diviero v. Uniroyal Goodrich Tire Co.,
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`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
`
`lacked chemical background to gauge compatibility of steel and rubber interface in
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`tire).
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`6
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`
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`B. Testimony Regarding Patent Law or Legal Issues
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`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.
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`At several points in his declaration, Mr. Andrews recites the legal standards for
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`anticipation, obviousness, claim construction, etc. (See, e.g., Ex. 1002 at ¶¶ 32-35,
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`61.) To the extent that Mr. Andrews is merely reciting the legal standards
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`provided to him as background for his opinions, AVS does not object to its
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`inclusion in his declaration. AVS does, however, object to the substantive
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`admissibility as evidence of any expert testimony on patent law
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`Further, AVS objects to instances where Mr. Andrews provides opinions the
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`ultimate legal issues of “patentability” or “validity.” (See, e.g., Ex. 1106 at ¶¶ 13-
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`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.
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`1994) (“Although an expert's opinion may ‘embrace[] an ultimate issue to be
`
`decided by the trier of fact[,]’ Fed. R. Evid. 704(a), the issue embraced must be a
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`7
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`factual one.”); Connell v. KLN Steel Prods. Ltd., 2009 U.S. Dist. LEXIS 20576
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`(N.D. Ill. Mar. 16, 2009) (“Expert testimony as to legal conclusions that will
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`determine the outcome of the case is inadmissible.”).
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`AVS also objects to the admissibility of Mr. Andrews’ legal opinions on the
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`prior art status of references (e.g., Ex. 1106 at ¶ 65), ultimate conclusions as to
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`obviousness (e.g., Ex. 1106 at ¶ 119), or secondary considerations, to the extent
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`they are offered as “factual” evidence. For example, at paragraph 119, Mr.
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`Andrews states that:
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`Regardless, even if evidence of secondary considerations existed, in my
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`opinion it would be insufficient to overcome the clear obviousness of the
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`claims of the ’697 patent as outlined above.
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`(Ex. 1106 at ¶ 119.) Such legal conclusions are not properly the basis of expert
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`testimony. See, e.g. Soverain Software LLC v. Newegg Inc., 705 F.3d 1333, 1341
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`(Fed. Cir. 2013), quoting Avia Group Int'l v. L.A. Gear Cal., Inc., 853 F.2d 1557,
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`1564 (Fed. Cir. 1988) (“an expert’s opinion on the legal conclusion of obviousness
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`is neither necessary nor controlling”). See also Connell v. KLN Steel Prods. Ltd.,
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`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”).
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`C. Speculative, Unsupported, or Conclusory Opinions
`
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`8
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`IPR2013-00413
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`Pursuant to Federal Rule of Evidence 702, expert testimony is admissible
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`only if “(1) the testimony is based upon sufficient facts or data, (2) the testimony is
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`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
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`cuff—deploying neither data nor analysis—is not acceptable methodology.” Lang
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`v. Kohl’s Food Stores, Inc., 217 F.3d 919, 924 (7th Cir. 2000); Upjohn Co. v.
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`MOVA Pharm. Corp., 225 F.3d 1306, 1311-12 (Fed. Cir. 2000) (expert testimony
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`regarding what is “widely known” requires documentary evidence). See also
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`Comm. Note to Fed. R. Evid. 702 (2000) (an expert opinion is inadmissible as
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`conclusory if it “cannot reasonably be assessed for reliability”). Further, 37 C.F.R.
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`§ 42.65 provides that expert testimony “that does not disclose the underlying facts
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`or data on which the opinion is based is entitled to little or no weight.”
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`Mr. Andrews’ declaration contains numerous instances where he simply
`
`talks “off the cuff” or provides a conclusory opinion without any support. Each of
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`these opinions by Mr. Andrews is inadmissible as expert testimony:
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`
`
`At paragraph 36, Mr. Andrews provides a conclusory definition of a
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`person of ordinary skill. (Ex. 1106 at ¶36.) Mr. Andrews, however, provides no
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`basis or support for his definition of a person of ordinary skill in the art, and
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`instead he simply gives a conclusory opinion. While he recites the legal factors to
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`be considered in defining a person of ordinary skill in the art (see Ex. 1106 at ¶35),
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`9
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`he never actually applies those factors to the facts in this matter. For example, he
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`never explains what the “education level of the inventor” was, the “sophistication
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`of the technology,” or what “the education level of active workers” was, or how
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`they affect the level of ordinary skill in the art relative to the ‘697 patent
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`
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`At paragraph 38, Mr. Andrews provides a definition of the scope and
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`content of the prior art. (Ex. 1106 at ¶38.) He fails to provide, however, any basis
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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
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`“vehicle electronics” encompasses a great deal more than the diagnostic and
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`telematics technology of the ‘697 patent. As discussed above, expertise in vehicle
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`electronics generally is insufficient to form a basis for expertise in the subject
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`matter of the ‘697 patent. (See supra.) Further, he provides a conclusory opinion
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`on the legal conclusion that “one of ordinary skill in the art as of June 1995 would
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`have considered Simms and DiLullo to be within the same technical field as the
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`subject matter set forth in the ‘697 patent,” but provides no basis for this opinion.
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`
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`At paragraph 100, Mr. Andrews makes the conclusory assertion—
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`without any explanation or support—that the diagnosis system and display of
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`DiLullo would have been “interchangeable” with the display of Simms and could
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`have been used to “enhance” the display of Simms. But this is not a recognized
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`obviousness basis under the law. The mere fact that two references could be
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`10
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`combined is not alone evidence of obviousness. See, e.g., Server Tech., Inc. v. Am.
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`Power Conversion Corp., 2012 U.S. Dist. LEXIS 140133 (D. Nev. Sept. 28, 2012)
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`(“The mere fact that prior art references could be combined to reach the patented
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`design does not render the resultant combination obvious absent a reason to
`
`combine the references in such a manner”).
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`At paragraph 101, Mr. Andrews makes the conclusory assertion that,
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`completely changing the fundamental nature of the display in Simms from
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`displaying only messages received from an off-vehicle site to displaying an on-
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`board diagnosis, would have been only “a simple design choice.” (Ex. 1106 at
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`¶101.) Mr. Andrews does not explain or support his opinion for why this
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`fundamental change would have only been a “design choice.”
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`
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`At paragraphs 102 and 104, Mr. Andrews makes the conclusory
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`assertion that “as of June 1995, in-vehicle displays capable of displaying
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`information produced by diagnostic systems were well-known and in common
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`use.” (Ex. 1106 at ¶ 102, 104.) Mr. Andrews, however, fails to cite to any
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`examples other than DiLullo or any other basis for this bald assertion.
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`
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`At paragraph 103, Mr. Andrews makes the conclusory assertion that
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`“to the extent inclusion of a “display” or “warning device” in a vehicle led to
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`commercial success, this success would be attributable not to the claimed subject
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`matter, but to the features of well-known prior art displays.” (Ex. 1106 at ¶ 103.)
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`11
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`Mr. Andrews, however, has no way of making this sweeping statement without
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`addressing actual evidence of commercial success. He improperly assumes that
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`success of a vehicle display could never be attributable to its ability to display on-
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`board diagnoses.
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`At paragraph 111, Mr. Andrews states that “[i]n my opinion, as of
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`June 1995, GPS was a well-known alternative to LORAN.” He does not provide
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`any support for this conclusory statement. (Ex. 1106 at ¶ 111.)
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`
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`At paragraphs 106-119 Mr. Andrews sets forth conclusory allegations
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`that the claims of the ‘697 patent would have been obvious in view of DiLullo.
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`His arguments, however, are based on unsupported assumptions regarding what
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`would have been desirable or advantageous in the semi-truck system of DiLullo,
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`even though he has no experience with semi-trucks. (See Ex. 1106 at ¶¶ 106-119.)
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`
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`At paragraph 118, Mr. Andrews makes the conclusory assertion that
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`“to the extent inclusion of a GPS device in a vehicle led to commercial success,
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`this success would be attributable not to the claimed subject matter, but to the
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`features of well-known prior art GPS devices.” (Ex. 1106 at ¶ 118.) Without
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`addressing any specific examples, however, it is impossible for Mr. Andrews to
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`sweepingly state that there is no possible situation where success of a system or
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`device could be attributable to its ability to transmit GPS location with diagnostic
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`information.
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`12
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`Accordingly, AVS objects to such speculative, conclusory, or unsupported
`
`testimony, as such testimony is unreliable and unhelpful, irrelevant, and unfairly
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`prejudicial.
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`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,
`
`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
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`standards. For example, expert testimony is irrelevant if it is based on an incorrect
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`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)
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`(“[T]estimony based on an incorrect legal standard may confuse the jury, and may
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`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
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`erroneous claim construction, Dr. Rasty’s opinion … is not admissible.”).
`
`In several instances, Mr. Andrews provides opinions in his declaration that
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`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:
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`
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`At paragraphs 52 and 78 of his declaration, Mr. Andrews provides
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`opinions that are irrelevant because they are based on an incorrect interpretation of
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`13
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`the claim term “control.” (See Ex. 1106 at ¶¶ 52, 78.) Specifically, Mr. Andrews
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`concludes that DiLullo discloses a processor “arranged to control at least one part
`
`of the vehicle based on the output indicative or representative of the state of the
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`vehicle or the state of a component of the vehicle,” as required by claim 17 of the
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`‘697 patent. (See id.) However, AVS maintains its position that simply
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`transmitting or displaying information does not constitute “control” under the
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`proper interpretation of the claim. (See Preliminary Patent Owner Response at -.)
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`Further, AVS maintains that simply displaying information, sounding a warning, or
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`flashing lights does not constitute the required “control” under a correct
`
`construction of the term. (Id.) AVS recognizes that the Board has preliminarily
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`taken the position that “control” can encompass transmission or display of
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`information. (See 1/13/14 Board Decision.) However, AVS respectfully maintains
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`its objection that this is an incorrect claim construction, therefore making any
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`opinions based on this construction irrelevant.
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`
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`At paragraphs 79 and 85, Mr. Andrews assumes that DiLullo discloses
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`the claimed “warning device” because it discloses a display. AVS recognizes that
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`the Board preliminarily agreed in its Decision Instituting Inter Partes Review with
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`Mr. Andrews’ opinion. (See 1/13/14 Decision.) AVS maintains its position,
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`however, that claims of the ‘697 patent, separately claim a warning device and
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`display—they are defined in the ‘697 patent as being different things and are
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`14
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`claimed separately. (See Preliminary Patent Owner’s Response at p. 22.) AVS
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`therefore maintains its objection that this is an incorrect claim construction,
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`therefore making any opinions based on this construction irrelevant.
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`
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`At paragraph 116, Mr. Andrews argues that the mere fact that the
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`Simms and DiLullo “relate to the same subject matter” of “monitoring and
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`diagnostic systems and methods” alone would have made it obvious to combine
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`them. (Ex. 1106 at ¶ 116.) That opinion, however, is contrary to the law. It is not
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`enough for obviousness to merely pick and choose references in the same field
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`without more. Obviousness requires a rational, obvious reason that one of ordinary
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`skill in the art would have had to combine the references. See KSR Int'l Co. v.
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`Teleflex Inc., 550 U.S. 398, 415 (U.S. 2007); Graham v. John Deere Co., 383 U.S.
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`1, 17 (U.S. 1966).
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`
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`Mr. Andrews misapplies the standards for secondary considerations.
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`For example, Mr. Andrews states that “to the extent inclusion of a GPS device in a
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`vehicle led to commercial success, this success would be attributable not to the
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`claimed subject matter, but to the features of well-known prior art GPS devices.”
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`(Ex. 1106 at 118.) He also states that no long-felt need existed because “GPS
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`devices were in common use long before the ’697 patent was filed.” (Id. at 118.)
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`But the relevant commercial success or long felt need are not be that of just any
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`“GPS device in a vehicle,” but rather the commercial success or long-felt need of
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`15
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2013-00413
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`the claimed invention—a system that transmits GPS information with a diagnosis
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`to a remote site. See Galderma, Inc., 737 F.3d 731 (commercial success is
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`analyzed with respect to the claimed invention).
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`Accordingly, AVS objects to such irrelevant testimony or testimony based
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`on incorrect legal standards or claim constructions, as such testimony is unreliable
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`and unhelpful, irrelevant, and unfairly prejudicial.
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`4.
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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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`filed by Petitioner, to any of the above-discussed inadmissible evidence. For
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`example, should the Board exclude any or all of Mr. Andrews’ opinions or AVS’s
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`litigation infringement contentions, AVS also objects to any attorney argument
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`offering similar statements.
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`Respectfully submitted,
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`
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`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
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`DATE: January 27, 2014
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`MCANDREWS HELD & MALLOY
`500 West Madison, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
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`
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`16
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2013-00413
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`Facsimile: (312) 775-8100
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`
`CUSTOMER NUMBER: 23446
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`17
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2013-00413
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`CERTIFICATE OF SERVICE
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`I hereby certify that the Patent Owner’s Objections to Toyota’s Evidence in
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`connection with Inter Partes Review Case IPR2013-00413 was served on this 27th
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`day of January 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
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`Telephone: 312-775-8000
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`Facsimile: 312-775-8100
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`
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`CUSTOMER NUMBER: 23446
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`Date: January 27, 2014
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`
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`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
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`18
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