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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`
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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 AMENDED OBJECTIONS TO EVIDENCE
`SUBMITTED BY TOYOTA MOTOR CORPORATION
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`Case No. IPR2013-00417
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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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`
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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 AMENDED OBJECTIONS TO EVIDENCE
`SUBMITTED BY TOYOTA MOTOR CORPORATION
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`Case No. IPR2013-00417
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`Pursuant to 37 C.F.R. § 42.64 and the Initial Conference Call on February 3,
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`2014, Patent Owner American Vehicular Sciences LLC (“AVS”) serves and
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`submits the following amended objections to evidence served with Toyota Motor
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`Corporation’s (“Toyota”) Petition for Inter Partes Review of U.S. Pat. No.
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`8,036,788 (the “‘788 patent”). These amended objections supersede AVS’s prior
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`objections to evidence served and submitted on January 27, 2014 (Paper No. 16).
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`EXHIBITS 1003 AND 1004 (ISHIHARA)
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`1.
`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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`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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`1
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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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`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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`2
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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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`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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`3
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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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`2.
`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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`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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`4
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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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`(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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`5
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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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`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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`6
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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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`INADMISSIBLE ATTORNEY ARGUMENT IN PETITION
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`3.
`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 the Fry or Ishihara references,
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`AVS also 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/
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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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`7
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`CERTIFICATE OF SERVICE
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`I hereby certify that the Patent Owner’s Amended Objections to Evidence
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`Submitted by Toyota Motor Corporation in connection with Inter Partes Review
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`Case IPR2013-00417 was served on this 5th day of February by electronic mail to
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`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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`MCANDREWS HELD & MALLOY, LTD.
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`Telephone: 312-775-8000
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`Facsimile: 312-775-8100
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`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
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`CUSTOMER NUMBER: 23446
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`Date: February 5, 2014
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`8
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