UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TOYOTA MOTOR CORPORATION
`
`Petitioner
`
`
`
`v.
`
`
`
`Patent of AMERICAN VEHICULAR SCIENCES LLC
`
`Patent Owner
`
`
`
`Patent No. 8,036,788
`
`Issue Date: October 11, 2011
`
`Title: VEHICLE DIAGNOSTICS OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
`
`
`
`PATENT OWNER’S OBJECTIONS TO FEBRUARY 18, 2014
`SUPPLEMENTAL EVIDENCE SUBMITTED BY TOYOTA MOTOR
`CORPORATION
`
`Case No. IPR2013-00417
`
`
`
`
`
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`
`
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TOYOTA MOTOR CORPORATION
`
`Petitioner
`
`
`
`v.
`
`
`
`Patent of AMERICAN VEHICULAR SCIENCES LLC
`
`Patent Owner
`
`
`
`Patent No. 8,036,788
`
`Issue Date: October 11, 2011
`
`Title: VEHICLE DIAGNOSTICS OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
`
`
`
`PATENT OWNER’S OBJECTIONS TO FEBRUARY 18, 2014
`SUPPLEMENTAL EVIDENCE SUBMITTED BY TOYOTA MOTOR
`CORPORATION
`
`Case No. IPR2013-00417
`
`
`
`
`
`
`
`
`
`
`
`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 (“AVS”) serves and submits the
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`following objections to supplemental evidence served on February 18, 2014 by
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`Toyota Motor Corporation (“Toyota”) for Inter Partes Review of U.S. Pat. No.
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`8,036,788 (“the 788 patent”). These objections to Toyota’s supplemental evidence
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`are in addition to the previous amended objections submitted by AVS on February
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`5, 2014, and are only in response to new evidence submitted by Toyota. AVS does
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`not waive its prior amended objections.
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`1.
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`EXHIBIT 1011 (AWARD TO KEVIN FRY)
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`As set forth in AVS’s previous amended objections, AVS objects to the
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`admissibility of K.N. Fry, “Diesel Locomotive Reliability Improvement by
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`System Monitoring,” Proc. Instn. Mech. Engrs. Vol. 209, 3-12 (1995) (“Fry”)
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`because Toyota has not sufficiently established that Fry is prior art to the 788
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`patent. For that reason, Fry is irrelevant pursuant to Fed. R. Evid. 402. See, e.g.,
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`Nordock Inc. v. Systems Inc., No. 11-C-118, 2013 U.S. Dist. LEXIS 34661, at *7
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`(E.D. Wis. Mar. 13, 2013) (“Because insufficient evidence has been presented
`
`regarding the dates of the two publications, they are not admissible as prior art and
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`Nordock’s motion to exclude ‘undated’ and ‘unpublished’ references from
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`evidence as asserted ‘prior art’ references is granted.”); Amini Innovation Corp. v.
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`Anthony California, Inc., No. 03-8749, 2006 U.S. Dist. LEXIS 100800, at *19
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`
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`1
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`
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`(C.D. Cal. Sept. 21, 2006) (“Without knowing the publication dates, the documents
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`are not admissible as prior art.”).
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`One of the pieces of “evidence” that Toyota has now submitted as part of its
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`supplemental evidence to allegedly support the publication date of the Fry
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`reference is Exhibit 1011, a photocopy of an award purportedly given to Mr. Fry
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`for authoring the Fry reference. (See Exhibit 1011.) That award, however, is not
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`relevant in any way to the publication date of Fry, as it does not provide any date
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`other than “1995”. See Fed. R. Evid. 401-402. The fact that Mr. Fry may have
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`received an award sometime in 1995 does nothing to show that the Fry reference
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`was publicly accessible prior to June 7, 1995. It is apparently being submitted only
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`to bolster Mr. Fry, a purpose not allowed by the Federal Rules of Evidence. See
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`Fed. R. Evid. 403.
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`Further, Exhibit 1011 constitutes inadmissible hearsay, as it is being offered
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`for the truth of the matter asserted and does not qualify for any hearsay exception.
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`See Fed. R. Evid. 801-804.
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`2.
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`EXHIBIT 1012 (SAGE PUBLICATIONS WEBSITE LISTING)
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`AVS objects to the admissibility of Exhibit 1012 on the basis of hearsay and
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`lack of relevance. The Fry reference purports to be an article that the Institution
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`for Mechanical Engineers arranges to have published. Exhibit 1012 is a website
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`print-out from a current publisher of the Fry reference, Sage Publications, printed
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`2
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`
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`
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`out in February of 2014. (See Exhibit 1012.) In 1995, the Fry reference was
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`purportedly published by a different third party organization, Mechanical
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`Engineering Publications Limited. (See Exhibit 1014 at ¶ 3.) Sage Publications
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`currently publishes the Fry reference on behalf of the Institution of Mechanical
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`Engineers. (See id. at 4.) The website print-out indicates a publication date for the
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`Fry reference of January 1995. Toyota, however, has not provided any
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`foundational evidence or testimony to establish that the Sage Publications web-site
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`printout record meets an exception to the hearsay rule, as being made “at or near
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`the time” of the act purported to be true, i.e., the alleged publication date of Fry.
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`See Fed. R. Evid. 803(6). Indeed, it appears that Sage Publications was not even
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`the organization that published the Fry reference in 1995. (See Exhibit 1014 at ¶
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`3.) Moreover, it is highly doubtful that the Fry reference was available for
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`download on the Internet in 1995—when the Internet was in its infancy and
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`download speeds were not sufficient for making articles available on the Internet.
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`Because
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`the web-site printout has not been established as being made
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`contemporaneous with the publication date of Fry, it would not be enough that the
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`web-site may be a “record of regularly conducted activity” in 2014—it is still
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`inadmissible hearsay. See Fed. R. Evid. 803. Here, it is more than likely that
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`when Sage created its web-site download system sometime well after 1995, that it
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`gave the Fry reference a date of January 1995 out of recordation convenience since
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`
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`3
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`
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`the Fry reference itself does not have a date of publication beyond “1995.” See
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`Fed. R. Evid. 802. See also United States v. Jackson, 208 F.3d 633, 637 (7th Cir.
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`2000) (web postings from the Internet were inadmissible hearsay); St. Clair v.
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`Johnny's Oyster & Shrimp, Inc., 76 F. Supp. 2d 773, 775 (S.D. Texas 1999) (“Any
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`evidence procured off the Internet is adequate for almost nothing, even under the
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`most liberal interpretations of the hearsay exception rules.”); Hilgraeve, Inc. v.
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`Symantec Corp., 271 F. Supp. 2d 964, 974 (E.D. Mich. 2003) (“Plaintiff correctly
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`notes that the dates imprinted on these documents are hearsay when offered to
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`prove the truth of the matter asserted, that is, that SAM 1.3 was accessible to the
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`public as of the date set forth on the documents.”).
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`Further, because the Sage Publications web-site printout at best only
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`establishes how Sage, in 2014, now records the release date of the Fry reference
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`(rather than the date that the Fry reference was actually accessible to the public,
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`such as indexed in a library), it is not relevant. The only relevant date is the date
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`on which Fry was accessible to the public—not the date that Sage Publications
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`gives the reference (in hindsight) in 2014, nor even the date on which the Fry
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`reference was mailed out. Indeed, it is common knowledge that magazines or
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`journals are not necessarily publicly available on the date affixed to the magazine
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`or journal. Under the law, Toyota must establish the date on which the Fry
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`reference was available and indexed in a library or available for download from the
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`
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`4
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`
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`Internet—something that Toyota has wholly failed to do. See Nichols Inst.
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`Diagnostics, Inc. v. Scantibodies Clinical Lab., Inc., 195 Fed. Appx. 947, 950
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`(Fed. Cir. 2006) (“whether a given reference is a ‘printed publication’ depends on
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`whether it was ‘publicly accessible’ during the relevant period”; focusing on the
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`date that at least one library received a copy of a reference and made it available to
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`the public); In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989) (“The statutory
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`phrase ‘printed publication’ has been interpreted to mean that before the critical
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`date the reference must have been sufficiently accessible to the public interested in
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`the art; dissemination and public accessibility are the keys to the legal
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`determination whether a prior art reference was ‘published.’”). As such, the 2014
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`Sage Publications website print-out is not relevant, as it does not establish the date
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`that Toyota must prove. See Fed. R. Evid. 401-402.
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`3.
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`EXHIBIT 1013 (DECLARATION OF KEVIN FRY)
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`AVS objects to the admissibility of Exhibit 1013 on the basis of hearsay and
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`lack of relevance. Exhibit 1013 is a declaration from Mr. Fry, the author of the Fry
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`reference. (See Exhibit 1014.)
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`First, Mr. Fry’s declaration is inadmissible because he does not purport to
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`have any personal knowledge regarding when the Fry reference was available and
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`indexed in any library or available for download from the Internet. See Fed. R.
`
`Evid. 602 (“A witness may testify to a matter only if evidence is introduced
`
`
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`5
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`
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`sufficient to support a finding that the witness has personal knowledge of the
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`matter.”). At most, Mr. Fry testifies about the date Sage Publications currently
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`states is the “published” date for the reference, which is not the relevant date. See
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`Fed. R. Evid. 401-403.
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`Second, under Federal Circuit law, any individual claiming prior invention
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`(which would include an individual claiming prior publication of an allegedly
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`anticipating prior art reference), must provide corroborating evidence—oral
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`testimony alone about such an individual’s “recollection” is inadmissible. See
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`Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1374-76 (Fed. Cir.
`
`2009) (requiring evidence to corroborate testimony of an individual regarding
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`earlier invention for purposes of invalidating a patent). Here, Mr. Fry fails to point
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`to any admissible, non-hearsay corroborating evidence. He only points to the
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`irrelevant and un-dated award he received for authoring the Fry reference, and the
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`irrelevant and hearsay 2014 Sage Publications web-site record (see above
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`discussion). He provides no contemporaneous corroborating evidence to support
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`the publication date of the Fry reference. As such, Mr. Fry’s testimony is
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`inadmissible hearsay and irrelevant. See Fed. R. Evid. 801-803, 401-403.
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`4.
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`EXHIBIT 1014 (AFFIDAVIT OF SARAH BROADHURST)
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`AVS objects to the admissibility of Exhibit 1014 on the basis of hearsay,
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`lack of relevance, and as not constituting the best evidence of the purported
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`6
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`
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`documents in question. Exhibit 1014 is a declaration from the Institution of
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`Mechanical Engineers, the organization that arranges for the Fry reference to be
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`published by a third party. (See Exhibit 1014.)
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`Ms. Broadhurst’s declaration does not purport to have any personal
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`knowledge regarding the publication date of Fry. See Fed. R. Evid. 602 (“A
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`witness may testify to a matter only if evidence is introduced sufficient to support a
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`finding that the witness has personal knowledge of the matter.”). Ms. Broadhurst
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`does not even purport to have been employed by the Institution of Mechanical
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`Engineers (the institution that arranged for the publication of the Fry reference) in
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`1995, or have any personal recollection of the publication date of Fry.
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`Instead, the sum total of her testimony relates to describing documents,
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`which is hearsay upon hearsay. Ms. Broadhurst offers testimony regarding alleged
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`“records of the dates on which the articles it published were received, accepted for
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`publication, and eventually published,” but she does not attach any of those
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`documents as evidence; nor does she connect any such records to the Fry
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`reference. (See Exhibit 1014 at ¶ 4.) Hearsay testimony about supposed “records”
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`that are not in evidence is inadmissible—the records themselves (if they existed
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`and if they were contemporaneous with the actual publication of Fry) would be the
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`relevant evidence. See, e.g., Quantum Mgmt. Group v. Univ. of Chicago Hosps.,
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`No. 99-C-2248, 2000 WL 1221632, at *5 (N.D. Ill. Aug. 18, 2000) (“There being
`
`
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`7
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`no financial records to substantiate the financial condition of the Plan, Mr. Fey’s
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`testimony to prove the contents of these phantom records is hearsay, lacks
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`foundation, and is not based on personal knowledge. Nor can Plaintiff use Mr.
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`Fey’s testimony to prove the contents of any of these records without producing
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`the records themselves.”); Manlapaz v. Unifund CCR Partners, No. 08-6524, 2009
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`WL 3015166, at *4 (N.D. Ill. Sept. 15, 2009) (explaining that while a business
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`record itself may be admissible under Fed. R. Evid. 803(6), “the testimony of a
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`witness making reference to the [unproduced business] record” is not admissible);
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`Allied Sales & Serv. Co. v. Global Indus. Techs., Inc., No. 97-0017, 2000 WL
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`726216 at *24, n.1 (S.D. Ala. May 1, 2000) (holding testimony in affidavit
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`inadmissible in part because the testimony was “inadmissible hearsay, based not on
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`the witness’s person knowledge but on his review, analysis and interpretation of
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`Tool-Smith documents that are not in evidence”); Fed. R. Evid. 1002 (“An original
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`writing, recording, or photograph is required in order to prove its content unless
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`these rules or a federal statute provides otherwise.”).
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`Ms. Broadhurst does not provide any of the business records of the
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`Institution of Mechanical Engineers as is required by the Federal Rules of
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`Evidence. Rather, the only evidence in the record that Ms. Broadhurst attaches to
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`her affidavit is the website print-out from the Sage Publications website. As
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`discussed above, Sage Publications was not even the publisher of the Fry reference
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`8
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`in 1995. And, in any event, the website print-out from the Sage Publications
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`website is, as also discussed above, hearsay because it is not a record made “at or
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`about the time” of the act to be proven (i.e., the publication of Fry). See Fed. R.
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`Evid. 801-803.
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`Further, Ms. Broadhurst’s declaration is inadmissible because it relates to an
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`irrelevant date. The relevant date that Toyota must prove is not the date Sage
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`Publications may have affixed to the Fry reference, or the date that Sage’s records
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`(in 2014) give for the publication date. The relevant date is the date on which the
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`Fry reference was available and indexed in a library or available for download
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`from the Internet. Toyota has offered no evidence, such as a stamped copy of the
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`Fry reference, showing when it was received by any library or available for
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`download. See Fed. R. Evid. 401-403.
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`Respectfully submitted,
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`
`
`
` /Thomas J. Wimbiscus/
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`Thomas J. Wimbiscus
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`Registration No. 36,059
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`DATE: February 25, 2014
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`MCANDREWS HELD & MALLOY, LTD.
`500 West Madison, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile: (312) 775-8100
`CUSTOMER NUMBER: 23446
`
`
`
`
`
`9
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`CERTIFICATE OF SERVICE
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`I hereby certify that the Patent Owner’s Objections to the February 18, 2014
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`Supplemental Evidence Submitted By Toyota Motor Corporation in connection
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`with Inter Partes Review Case IPR2013-00417 was served on this 25th day of
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`February by electronic mail to the following:
`
`
`
`A. Antony Pfeffer
`apfeffer@kenyon.com
`Thomas R. Makin
`tmakin@kenyon.com
`ptab@kenyon.com
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212-425-7200
`
`MCANDREWS HELD & MALLOY
`
`
`
`
`
`
`Telephone: 312-775-8000
`
`
`Facsimile: 312-775-8100
`
`
`
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`
`
`
`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
`
`
`
`
`
`
`
`
`CUSTOMER NUMBER: 23446
`
`Date: February 25, 2014
`
`
`
`
`
`10
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