UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TOYOTA MOTOR CORPORATION
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`Petitioner
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`v.
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`Patent of AMERICAN VEHICULAR SCIENCES
`
`Patent Owner
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`
`
`Patent No. 6,738,697
`
`Issue Date: May 18, 2004
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`Title: TELEMATICS SYSTEM FOR VEHICLE DIAGNOSTICS
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`
`
`PATENT OWNER’S AMENDED OBJECTIONS TO EVIDENCE
`SUBMITTED BY TOYOTA MOTOR CORPORATION
`
`Case No. IPR2013-00413
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`______________________________
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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. IPR2013-00413
`
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.64 and the Board’s comments during the
`
`February 3, 2014 Initial Conference Call, Patent Owner American Vehicular
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`Sciences (“AVS”) serves and submits the following amended objections to
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`evidence served with the Petition of Toyota Motor Corporation (“Toyota”) Petition
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`for Inter Partes Review of U.S. Pat. No. 6,738,697 (“the ‘697 patent”). These
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`amended objections supersede AVS’s prior objections to evidence served and
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`submitted on January 27, 2014. (Paper No. 18.)
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`1.
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`EXHIBIT 1105 (AVS’S LITIGATION INFRINGEMENT
`CONTENTIONS)
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`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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`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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`
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`1
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`
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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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`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
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`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
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`the inter partes review. See Fed. R. Evid. 401. Any minimal probative value is
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`
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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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`2.
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`INADMISSIBLE ATTORNEY ARGUMENT IN PETITION
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`Finally, AVS also objects pursuant to Fed. R. Evid. 402, 702, and 802 to any
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`arguments, statements, or references in the Petition or subsequent papers filed by
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`Petitioner, to any of the above-discussed inadmissible evidence. For example,
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`should the Board exclude AVS’s litigation infringement contentions, AVS also
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`objects to any attorney argument offering similar statements.
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`DATE: February 5, 2014
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`Respectfully submitted,
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`/Thomas J. Wimbiscus/
`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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`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that the Patent Owner’s Amended Objections to Toyota’s
`Evidence in connection with Inter Partes Review Case IPR2013-00413 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
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`
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`
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`Telephone: 312-775-8000
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`
`Facsimile: 312-775-8100
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`
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`
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`CUSTOMER NUMBER: 23446
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`Date: February 5, 2014
`
`
`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
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