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`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 LLC
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`Patent Owner
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`Patent No. 8,036,788
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`Issue Date: October 11, 2011
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`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
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`
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`PATENT OWNER’S OBJECTIONS TO EVIDENCE SUBMITTED BY
`TOYOTA MOTOR CORPORATION
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`Case No. IPR2013-00417
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`1.
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`2.
`3.
`4.
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`5.
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`CONTENTS
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`EXHIBIT RELATING TO PETITION GROUND REJECTED BY
`THE BOARD ................................................................................................... 1
`EXHIBITS 1003 AND 1004 (ISHIHARA) .................................................... 2
`EXHIBIT 1005 (FRY) ..................................................................................... 5
`EXHIBIT 1008 (WILHELM DECLARATION) ............................................ 8
`A. Testimony Regarding Patent Law ......................................................... 9
`B.
`Speculative and Unsupported Opinions .............................................. 10
`C.
`Irrelevant Opinions or Ones Based on Incorrect Legal Standard ....... 13
`INADMISSIBLE ATTORNEY ARGUMENT IN PETITION .................... 17
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`Pursuant to 37 C.F.R. § 42.64, Patent Owner American Vehicular Sciences
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`LLC (“AVS”) serves and submits the following objections to evidence served with
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`Toyota Motor Corporation’s Petition for Inter Partes Review of U.S. Pat. No.
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`8,036,788 (the “‘788 patent”).1
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`1.
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`EXHIBIT RELATING TO PETITION GROUND REJECTED
`BY THE BOARD
`On January 13, 2014, the Board granted inter partes review on the following
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`grounds raised in Toyota’s Petition:
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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 ensure
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`that they are a part of the record for this trial. See, e.g., 37 C.F.R. § 42.64(c)
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`(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.
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`§ 42.64(b)(1) . . . .”).)
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`1
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` Ground 1 (as to claims 1, 3, 4, 6, 7, 8, 11, 15, 16 and 18);
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` Ground 2 (as to claims 1, 3, 4, 6, 7, 8, 11, 16 and 18); and
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` Ground 3 (as to claims 9 and 15).
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`A trial was not instituted based on Ground 4. (See 1/13/14 Board Decision
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`(Paper No. 14) at 34 (“Board Decision”).)
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`Exhibit 1006 relates to a ground as to which no trial was instituted. AVS
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`therefore objects to this exhibit as irrelevant under Fed. R. Evid. 402; see also 37
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`C.F.R. §42.120 (“A patent owner may file a response to the petition addressing any
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`ground for unpatentability not already denied.”) (emphasis added). AVS further
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`objects to this exhibit under Fed. R. Evid. 403 because its probative value is
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`substantially outweighed by the risk that introduction of this evidence will confuse
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`the issues, lead to undue delay, waste time, and/or result in needlessly presenting
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`cumulative evidence. AVS reserves its right to supplement its objections should
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`Toyota later attempt to rely on this or other evidence during the course of this trial.
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`AVS additionally reserves its right to supplement its objections should Toyota seek
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`reconsideration of the Board’s Decision.
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`EXHIBITS 1003 AND 1004 (ISHIHARA)
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`2.
`In Ground 2 of its Petition, Toyota argues that certain claims of the ‘788
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`patent are anticipated by Japanese Unexamined Patent Application Publication
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`H01-197145 to Ishihara (“Ishihara”). Ishihara, however, purports to be an
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`2
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`
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`unexamined patent application that was published in Japanese. (See Ex. 1003.)
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`AVS objects to the admission of Exhibit 1003 (a purported copy of the Japanese
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`Ishihara reference) and Exhibit 1004 (the proffered translation of Ishihara)
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`because: (1) they have not been sufficiently authenticated under Fed. R. Evid.
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`901(a); and (2) the proffered translation does not conform to the requirements of a
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`proper affidavit under 37 C.F.R. § 42.63(b).
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`Federal Rule of Evidence 901(a) requires that as a condition precedent to
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`admission a piece of evidence must be authenticated through “evidence sufficient
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`to support a finding that the item is what the proponent claims it is.” Fed. R. Evid.
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`901(a). Ordinarily, documents are authenticated by attaching them to an affidavit
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`of an individual with personal knowledge of their authenticity who swears that the
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`documents are true and correct copies of the originals. See Fed. R. Evid.
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`901(b)(1). Documents from a foreign office are typically authenticated by
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`providing a certified copy. See Fed. R. Evid. 902(3). The Rules governing inter
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`partes review provide that only United States Patent Office documents are self-
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`authenticating without requiring a certified copy. See 37 C.F.R. § 42.61. Toyota
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`has not provided a certified copy of Ishihara or any other affidavit from a person
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`with personal knowledge of its authenticity. (See Exs. 1003 & 1004.) As such,
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`Ishihara is not admissible.
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`3
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`Second, in order to rely on Ishihara as prior art, Toyota was required to
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`provide a translation and “an affidavit attesting to the accuracy of the
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`translation.” 37 C.F.R. § 42.63(b). In lieu of an affidavit, a party may submit a
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`declaration “only if, the declarant is, on the same document, warned that willful
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`false statements and the like are punishable by fine or imprisonment, or both (18
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`U.S.C. 1001) . . . .” 37 C.F.R. § 1.68 (emphasis added); see also 37 C.F.R. § 42.2.
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`The certification provided by Toyota with its Petition is not an affidavit or
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`compliant declaration. (See Ex. 1004 at 7.) Further, Toyota’s certification is
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`deficient because it lacks authentication. Under the Federal Rules of Evidence
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`(which apply to inter partes review) “[w]itness testimony translated from a foreign
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`language must be properly authenticated and any interpretation must be shown to
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`be an accurate translation done by a competent translator.” Jack v. Trans World
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`Airlines, Inc., 854 F. Supp. 654, 659 (N.D. Cal. 1994); see also Townsend Eng’g
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`Co. v. HiTec Co., 1 U.S.P.Q.2d 1987, 1988 (N.D. Ill. 1986); 37 C.F.R. §
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`42.62. The certification offered by Toyota does not properly authenticate the
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`translation of Ishihara. The certification merely states: “This is to certify that the
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`attached translation is, to the best of my knowledge and belief, a true and accurate
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`translation from Japanese into English of the patent that is entitled: Unexamined
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`Patent Application Publication H01-197145.” (Ex. 1004 at 7.) The certification,
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`signed by a “Project Manager,” does not describe this individual’s qualifications to
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`4
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`make the translation. (Id.) In fact, the certification does not even state that this
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`individual is fluent in Japanese or that this individual actually translated the
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`document in question. (Id.) The certification therefore fails to properly
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`authenticate the translation. See Jack, 854 F. Supp. at 659 (striking translations
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`from the record where the party only provided “a statement by an individual at a
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`local translation center stating that the translations were true and correct”);
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`Townsend, 1 U.S.P.Q.2d at 1988.
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`Toyota has since attempted to submit a supplemental translation affidavit for
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`Ishihara.
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` (See 12/5/13 Order Denying Petitioner’s Request
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`to Submit
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`Supplemental Evidence (Paper No. 13).) The Board indicated that any such a
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`supplement must follow the process for objections under 37 § C.F.R. 42.64. (See
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`id.) AVS therefore submits its present objections to the deficient translation
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`certification provided by Toyota with its Petition.
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`EXHIBIT 1005 (FRY)
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`3.
`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
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`is prior art to the ‘788 patent. For that reason, Fry is irrelevant pursuant to Fed. R.
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`Evid. 402 and/or inadmissible pursuant to Fed. R. Evid. 403. See, e.g., Nordock
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`Inc. v. Systems Inc., No. 11-C-118, 2013 U.S. Dist. LEXIS 34661, at *7 (E.D. Wis.
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`5
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`Mar. 13, 2013) (“Because insufficient evidence has been presented regarding the
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`dates of the two publications, they are not admissible as prior art and Nordock’s
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`motion to exclude ‘undated’ and ‘unpublished’ references from evidence as
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`asserted ‘prior art’ references is granted.”); Amini Innovation Corp. v. Anthony
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`California, Inc., No. 03-8749, 2006 U.S. Dist. LEXIS 100800, at *19 (C.D. Cal.
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`Sept. 21, 2006) (“Without knowing the publication dates, the documents are not
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`admissible as prior art.”). In addition, AVS objects to a 2013-dated Internet cover
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`page and abstract of Fry that Toyota submitted as part of Exhibit 1005. Those
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`documents are inadmissible hearsay under Fed. R. Evid. 801 and 802 as to the
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`alleged publication date of Fry, and lack authenticity or reliability under Fed. R.
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`Evid. 901.
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`Specifically, Toyota acknowledges that the ‘788 patent claims priority to
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`June 7, 1995. (See Petition at 4.) The presumed § 102(a) date for the claims of the
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`‘788 patent therefore is June 7, 1995. The Fry reference, however, indicates only
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`that it was published in “1995,” without a more specific date. (See Exhibit 1005.)
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`The 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, including on or after June 7, 1995.
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`Indeed, the Fry reference discloses on its face that it was not accepted for
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`publication until December 22, 1994, making it highly unlikely that the reference
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`was published and publicly available by January 1, 1995 (as asserted by Toyota).
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`6
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`(See Exhibit 1005.) Accordingly, absent evidence that Fry was, for example,
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`publicly accessible at a library prior to June 7, 1995, it cannot constitute § 102(a)
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`prior art to the ‘788 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 4 n.1.) 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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`date for Fry of January 1, 1995 and cite the reference with a January 1995 date.
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`(See Ex. 1005 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 & Pro Line Co., 804 F.2d 135, 139 (Fed. Cir. 1986)
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`(as to an advertisement mailed on a certain date, “[n]o evidence was presented as
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`to the date of receipt of the mailer by any of the addressees.”); DH Tech., Inc. v.
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`Synergystex Int’l, Inc., No. 92-3307, 1994 U.S. Dist. LEXIS 5301, at *4 (N.D. Cal.
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`Apr. 11, 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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`7
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`Metal Prods. Co., 605 F. Supp. 2d 1362, 1366-67 (D. Del. 1985) (Section 102(b)
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`bar critical date was June 26, 1977; as to a printed brochure with a “6.77” date
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`mark, the evidence did not show that it was actually accessible to the public prior
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`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;
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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. Tex. 1999) (“[A]ny evidence procured
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`off the Internet is adequate for almost nothing, even under the most liberal
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`interpretation of the hearsay exception rules . . . .”).
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`EXHIBIT 1008 (WILHELM DECLARATION)
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`4.
`AVS also objects to the admissibility of the declaration of Dr. Ralph
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`Wilhelm, Jr. For the reasons discussed below, many of Dr. Wilhelm’s specific
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`opinions are inadmissible to the extent they are speculative and lack support, relate
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`to irrelevant matters, or are based on legally improper standards or claim
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`interpretations. As such, those specific opinions discussed below are separately
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`inadmissible under Fed. R. Evid. 702, 402 and/or 403.
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`
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`8
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`
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`A. Testimony Regarding Patent Law
`The rules for inter partes review provide that “[t]estimony on United States
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`patent law or patent examination practice will not be admitted.” 37 C.F.R.
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`42.65(a). At several points in his declaration, Dr. Wilhelm recites the legal
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`standards for anticipation, claim construction, person of ordinary skill in the art,
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`etc. (See, e.g., Ex. 1008 at ¶¶ 27-30.) To the extent that Dr. Wilhelm is merely
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`reciting the legal standards provided to him as background for his opinions, AVS
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`does not object to its inclusion in his declaration. AVS does, however, object to
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`the substantive admissibility of any expert testimony on patent law.
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`Further, AVS objects to instances where Dr. Wilhelm provides opinions on
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`the ultimate legal issues of “patentability” or “validity.” (See, e.g., Ex. 1008 at ¶¶
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`10 & 26.) Expert witness testimony may be relevant and helpful for technical
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`factual issues, but Dr. Wilhelm is not an expert on whether claims are or are not
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`patentable or valid under the Patent Laws. See, e.g., SRI Int'l, Inc. v. Advanced
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`Tech. Labs., Inc., No. 93-1074, 1994 U.S. App. LEXIS 36220, at *14 (Fed. Cir.
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`Dec. 21, 1994) (“An expert’s opinion on the ultimate legal conclusion of
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`obviousness is not ‘factual’ evidence.”); see also, e.g., Berry v. City of Detroit, 25
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`F.3d 1342, 1353 (6th Cir. 1994) (“Although an expert’s opinion may ‘embrace[] an
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`ultimate issue to be decided by the trier of fact[,]’ Fed. R. Evid. 704(a), the issue
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`embraced must be a factual one.”); Connell v. KLN Steel Prods. Ltd., No. 04-194,
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`9
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`2009 U.S. Dist. LEXIS 20576, at *25 (N.D. Ill. Mar. 16, 2009) (“Expert testimony
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`as to legal conclusions that will determine the outcome of the case is
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`inadmissible.”).
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`AVS also objects to the admissibility of Dr. Wilhelm’s legal opinions on the
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`prior art status of references (e.g., Ex. 1008 at ¶ 35, 57 & 77) to the extent they are
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`offered as “factual” evidence. For example, at paragraph 35, Dr. Wilhelm provides
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`the following legal conclusion:
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`Scholl issued on March 21, 1995, and was filed December 22, 1992. As a
`result, I understand that Scholl is prior art to the ’788 patent pursuant to at
`least 35 U.S.C. §§ 102(a) and 102(e), because it was both published and
`filed prior to the earliest June 1995 filing date listed on the face of the ’788
`patent..
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`(Id. at ¶ 35; see also id. at ¶¶ 57 & 77.) There is no reason for this type of legal
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`conclusion to be in an expert declaration—they more properly belong in attorney
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`argument or briefing. See, e.g. Soverain Software LLC v. Newegg Inc., 705 F.3d
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`1333, 1341 (Fed. Cir. 2013) (quoting Avia Group Int'l v. L.A. Gear Cal., Inc., 853
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`F.2d 1557, 1564 (Fed. Cir. 1988)); see also Connell, 2009 U.S. Dist. LEXIS
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`20576, at*25 (“legal arguments about the meaning of contracts belong in briefs,
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`not expert reports”).
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`Speculative and Unsupported Opinions
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`B.
`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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`10
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`the product of reliable principles and methods; and (3) the expert has reliably
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`applied the principles and methods to the facts of the case.” Fed. R. Evid. 702.
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`“Talking off the cuff—deploying neither data nor analysis—is not acceptable
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`methodology.” Lang v. Kohl’s Food Stores, Inc., 217 F.3d 919, 924 (7th Cir.
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`2000); Upjohn Co. v. MOVA Pharm. Corp., 225 F.3d 1306, 1311-12 (Fed. Cir.
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`2000) (expert testimony regarding what is “widely known” requires documentary
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`evidence); see also Comm. Note to Fed. R. Evid. 702 (2000) (“If the witness is
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`relying solely or primarily on experience, then the witness must explain how that
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`experience leads to the conclusion reached, why that experience is a sufficient
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`basis for the opinion, and how that experience is reliably applied to the facts. The
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`trial court’s gatekeeping function requires more than simply ‘taking the expert’s
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`word for it.’”). Further, 37 C.F.R. § 42.65 provides that expert testimony “that
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`does not disclose the underlying facts or data on which the opinion is based is
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`entitled to little or no weight.”
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`Dr. Wilhelm’s declaration contains numerous instances where he simply
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`talks “off the cuff” or provides a conclusory opinion without any support. Each of
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`these opinions by Dr. Wilhelm is inadmissible as expert testimony:
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`
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`At paragraph 31, Dr. Wilhelm provides a definition of a person of
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`ordinary skill. (Ex. 1008 at ¶ 31.) Dr. Wilhelm, however, provides no basis for
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`why he selected the criteria for what he believes is a person of ordinary skill in the
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`11
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`art at the time of the invention, and instead simply gives a conclusory opinion.
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`
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`At paragraphs 33 and 34, Dr. Wilhelm provides a definition of the
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`scope and content of the prior art and states that the prior art relied upon by Toyota
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`“would be considered highly relevant prior art.” (Ex. 1008 at ¶¶ 33-34.) Dr.
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`Wilhelm fails to provide, however, any basis for his definition or his statement that
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`certain prior art “would be considered highly relevant.” In particular, his opinion
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`that the scope of the prior art broadly includes all “vehicle electronics, diagnostics,
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`and communications” and that certain prior art “would be considered highly
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`relevant” is mere unsupported argument. The field of “vehicle electronics,
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`diagnostics, and communications” for example, encompasses a great deal more
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`than the diagnostic and telematics technology of the ‘788 patent.
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`
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`At paragraph 77, Dr. Wilhelm provides an opinion regarding the
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`publication date of Fry. As discussed above, there is insufficient support or
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`evidence for the publication date of Fry. (See supra.) Moreover, there is nothing
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`in Dr. Wilhelm’s background that makes him experienced in providing publication
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`dates.
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`
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`At paragraph 47 of his declaration, Dr. Wilhelm opines that “Scholl
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`first ‘detect[s] fault’ and ‘produce[s] fault code’ (the triggering event) and then as a
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`result ‘transmit[s] fault code to remote location . . . .” (Ex. 1008 at ¶ 47 (emphasis
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`added); see also id. at ¶ 42.) Dr. Wilhelm does not appear to opine that Scholl
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`
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`12
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`
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`expressly discloses that transmission to the remote location occur “as a result” of
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`the production of a fault code, and Dr. Wilhelm does not provide any opinion that
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`the same is inherently disclosed (i.e., that it must necessarily be present). (See
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`generally Ex. 1002.) Accordingly, Dr. Wilhelm’s opinions are inadmissible
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`because they are unsupported.
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`
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`Claim 11 of the ‘788 patent recites that “a plurality of different
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`sensors . . . monitor the at least one component or subsystem.” (Ex. 1001 at claim
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`11.) Dr. Wilhelm’s opinion that Scholl discloses this limitation is unsupported.
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`(See Ex. 1008 at ¶ 52.) Dr. Wilhelm cites to no portion of Scholl where Scholl
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`discloses using multiple sensors to monitor a single component or subsystem. (Id.)
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`His opinion is therefore unsupported, speculative and inadmissible.
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`Accordingly, AVS objects
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`to such speculative, conclusory, and/or
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`unsupported testimony.
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`C.
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`Irrelevant Opinions or Ones Based on Incorrect Legal
`Standard
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`Pursuant to Fed. Evid. 402, evidence is inadmissible if it is irrelevant, with
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`no exception made for expert witness testimony. See Fed. R. Evid. 402; see also
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`Fed. R. Evid. 403. Further, expert testimony in particular can be irrelevant and/or
`
`unfairly prejudical not only if it facially has no bearing on the dispute, but also if it
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`is based on underlying incorrect assumptions or standards. For example, expert
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`testimony is irrelevant and/or unfairly prejudicial if it is based on an incorrect legal
`
`
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`13
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`
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`
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`standard or claim construction. See, e.g., Noskowiak v. Bobst Sa, Case No. 04-C-
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`0642, 2005 U.S. Dist. LEXIS 19536, *14-15 (E.D. Wis. Sept. 2, 2005)
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`(“Testimony 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,
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`LLC, No. 09-319, 2011 U.S. Dist. LEXIS 64770, at *25 (D. Minn. June 17, 2011)
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`(“Because it is based on an erroneous claim construction, Dr. Rasty’s opinion on
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`this point is not admissible.”).
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`In several instances, Dr. Wilhelm provides opinions in his declaration that
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`are irrelevant/unfairly prejudicial to any issue and/or are irrelevant/unfairly
`
`prejudicial because they are based on an incorrect legal standard or claim
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`construction. See Fed. R. Evid. 402; Fed. R. Evid. 403 (excluding evidence where
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`“probative value is substantially outweighed by” e.g., “unfair prejudice,”
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`“confusing the issues,” “undue delay,” “wasting time,” and/or “needlessly
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`presenting cumulative evidence.”). These include the following:
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`As stated above, the Board instituted an inter partes review as to only
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`parts of Grounds 1, 2 and 3 and denied inter partes review as to Ground 4.
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`Accordingly, AVS objects to those portions of Dr. Wilhelm’s declaration that
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`relate to grounds for which no trial has been instituted. (See, e.g., Ex. 1008 at ¶¶
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`51, 72, 74, 84, 89, 91, 93 & 95-117.) As discussed supra, AVS reserves its right to
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`supplement its objections should Toyota later attempt to rely on any of these
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`
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`14
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`
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`
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`statements in Dr. Wilhelm’s declaration or should Toyota seek reconsideration of
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`the Board’s decision.
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`
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`At paragraph 24 of his declaration, Dr. Wilhelm provides opinions as
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`to claim construction which were not adopted by the Board, e.g., for the terms
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`“component” and “sensor.” Dr. Wilhelm’s opinions in this regard are therefore
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`irrelevant.
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`
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`Numerous paragraphs of Dr. Wilhelm’s declaration are based on
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`incorrect interpretations of the claims. Specifically, AVS respectfully maintains its
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`position that claims at issue in this inter partes review require an on-board
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`diagnosis or prognostic system. (See, e.g., 10/17/13 Patent Owner’s Preliminary
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`Response (Paper No. 11) at 13-15.) AVS therefore objects to those portions of Dr.
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`Wilhelm’s declaration that apply an erroneous interpretation of this claim
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`language. (See, e.g., Ex. 1008 at ¶¶ 41, 46, 50, 62, 67 & 71.)
`
`
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`Dr. Wilhelm applies another incorrect claim interpretation. AVS
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`respectfully maintains its position that claims 1 and 4 require that the transmission
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`to the remote location be initiated “in response to the triggering event.” (See
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`10/17/13 Patent Owner’s Preliminary Response (Paper No. 11) at 11-13; see also
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`Ex. 1001 at claim 1.) Dr. Wilhelm opines that this limitation is disclosed in Scholl
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`merely because the transmission disclosed in Scholl takes place after the fault code
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`is produced. (See Ex. 1008 at ¶ 42 & 47.) Because Dr. Wilhelm’s opinions in
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`paragraphs 42 and 47 are based on an incorrect claim interpretation, they are
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`inadmissible.
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`In paragraphs 42 and 47, Dr. Wilhelm also misapplies the doctrine of
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`inherency. As discussed above, Dr. Wilhelm opines that “Scholl first ‘detect[s]
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`fault’ and ‘produce[s] fault code’ (the triggering event) and then as a result
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`‘transmit[s] fault code to remote location . . . .” (Ex. 1008 at ¶ 47 (emphasis
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`added); see also id. at ¶ 42.) Dr. Wilhelm does not invoke the inherency doctrine
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`by name. He nevertheless purportedly applies it, however, when he assumes
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`without any express disclosure in Scholl that both Scholl “transmit[s] a fault code
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`to remote location” “as a result” of Scholl “produc[ing] the fault.” (Id.; see also
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`supra at Sec. IV.B.) To show anticipation, however, Dr. Wilhelm must show that
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`Scholl “necessarily” disclose the claimed transmission to the remote location. See
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`Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 1000 (Fed. Cir. 2006)
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`(“anticipation by inherent disclosure is appropriate only when the reference
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`discloses prior art that must necessarily include the unstated limitation”) (emphasis
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`added); Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir.
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`2009) (“The very essence of inherency is that one of ordinary skill in the art would
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`recognize that a reference unavoidably teaches the property in question.”)
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`(emphasis added). Because Dr. Wilhelm has not provided the required support to
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`show that Scholl “necessarily” discloses the claimed transmission to the remote
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`location, Dr. Wilhelm’s opinions in this regard are irrelevant.
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`Accordingly, AVS objects to such testimony because it is based on incorrect
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`legal standards or claim constructions, and such testimony is unreliable, unhelpful,
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`irrelevant, and unfairly prejudicial.
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`INADMISSIBLE ATTORNEY ARGUMENT IN PETITION
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`5.
`Finally, AVS also objects pursuant to Fed. R. Evid. 402, 403, 702, 802 and
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`901 to any arguments, statements, or references in the Petition or subsequent
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`papers filed by Petitioner, based on any of the above-discussed inadmissible
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`evidence. For example, should the Board exclude any or all of Dr. Wilhelm’s
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`opinions, or the Fry or Ishihara references, AVS also objects to any attorney
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`argument offering similar statements.
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`DATE: January 27, 2014
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`Respectfully submitted,
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` /Thomas J. Wimbiscus/
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`Thomas J. Wimbiscus
`Registration No. 36,059
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`MCANDREWS HELD & MALLOY, LTD.
`500 West Madison, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile: (312) 775-8100
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`
`CUSTOMER NUMBER: 23446
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`17
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`CERTIFICATE OF SERVICE
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`I hereby certify that the Patent Owner’s Objections to Evidence Submitted by
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`Toyota Motor Corporation in connection with Inter Partes Review Case IPR2013-
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`00417 was served on this 27th day of January by electronic mail to the following:
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`
`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
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`
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`MCANDREWS HELD & MALLOY, LTD.
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`Telephone: 312-775-8000
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`Facsimile: 312-775-8100
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`CUSTOMER NUMBER: 23446
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`Date: January 27, 2014
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`
`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
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`18
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